1

INTRODUCTION
The protection of famous marks was instigated by the Paris Convention and the TRIPS
Agreement and is implemented through Article 6bis of the Paris Convention and Article 16 of
the TRIPS Agreement. Consequently, those countries which have subsequently ratified the
Paris Convention and/or TRIPS Agreement have enabled the protection of marks with a
suitable reputation, without the need for registration, or at least registration in respect of the
same or similar corresponding goods or services. This provides greater protection for those
marks without the need to file defensive marks, or rely on a common law action in tort. On the
other hand, a lack of definition for well-known in both the Paris Convention and the TRIPS
Agreement has resulted in various interpretations, causing variation from jurisdiction to
jurisdiction.
In the United States, a mark is famous if it is widely recognized by the general consuming public
of the United States as a designation of source of the goods or services of the marks owner. The
determination of whether a mark possesses the requisite degree of recognition is governed by the
Trademark Dilution Revision Act (TDRA). The test to determine Dilution relates to an
association that diminishes the distinctiveness of a famous mark i.e. by blurring or by
tarnishment. There need be no deception or likelihood of confusion on the consumer. The harm
is to the brand owner, rather than to the consumer.
An anti-dilution provision is best defined as one which has both the following characteristics:
(1)

it protects a well-known trade mark against a loss of distinctiveness; and

(2)

it does not require proof of actual confusion on the part of consumers, but equally the
existence of consumer confusion does not remove protection.

The loss of distinctiveness protected by anti-dilution provisions has been defined as "a gradual
whittling away or dispersion of the identity and hold upon the public mind of the mark or name
by its use upon non-competing goods". It is the "watering down" of the distinctiveness of a mark.
This kind of dilution is often referred to as "blurring".
The other type of harm to a trade mark is "tarnishment". That involves an injury to the
reputation of the trade mark by "a use of an infringing mark to appeal to the public's senses in
such a way that the trade mark's power of attraction is affected". It typically involves a
disparaging use.
In reaching its decision, a US court may consider all relevant factors, including the following:
(i)
(ii)
(iii)
(iv)

the duration, extent, and geographic reach of advertising and publicity of the mark,
whether advertised or publicized by the owner or third parties;
the amount, volume, and geographic extent of sales of goods or services offered
under the mark;
the extent of actual recognition of the mark; and
whether the mark was registered under the Act of March 3, 1881, or the Act of
February 20, 1905, or on the principal register.

2011 Copyright. Elizabeth Houlihan.

The following paper, which has been compiled by Dr. Elizabeth Houlihan, Prinicpal of
Houlihan2 Patent & Trade Mark Attorneys, Co-Vice-Chair of the International Trade Marks
Committee of the IPO, for the purposes of bringing the position adopted by other countries on
Famous Marks to the attention of the IPO Membership. The paper was prepared following a
survey of famous mark protection laws and provides an overview of the current legal framework
in developed and developing legal markets.

AUSTRALIA
Contributor:

Dr. Elizabeth E. Houlihan

Co-Vice-Chair of IPO Committee on International Trade Marks
Houlihan2 Patent & Trade Mark Attorneys
Melbourne
Australia

Introduction
The introduction of Sections 60 and 120(3) into the Australian Trade Marks Act 1995 has
enabled the protection of trade marks with a suitable reputation in Australia, without the need for
registration, even in respect of completely unrelated goods and/or services. Unlike other
countries, however, such protection does not generally provide a ground for the Registrar to
reject an application on this basis. Trade Mark Applications can be removed from the Register
for non-use in the three-month opposition period following advertisement of acceptance in the
Official Journal (Section 60), or under an application for removal (Section 88(2)(a)). Therefore,
in Australia, whilst such provisions allow for greater protection of famous marks, owners of
famous marks are still required to remain alert and on top of changes in the industry. Even
registered marks are subject to removal where failure to identify and stop infringing use will, in
itself, leave the registration vulnerable for removal if the infringing conduct results in a
conflicting reputation.
Section 60:
The registration of a trade mark in respect of particular goods or services may be opposed on
the ground that:
(a) another trade mark had, before the priority date for the registration of the
first-mentioned trade mark in respect of those goods or services, acquired a reputation in
Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade
mark would be likely to deceive or cause confusion.
Famous marks may also be caught within Section 88(2)(a), which allows for
cancellation/rectification of a registered mark on the basis that the mark was wrongly registered.
In order to qualify, the famous mark must have acquired a suitable reputation, such that use by
another may be likely to deceive or cause confusion.

Reputation in Australia
Reputation is the recognition of the trade mark by the public generally or in the case of goods
within a specialised market, those markets which must be considered. This must be demonstrated
through a variety of means including advertisements in television or radio or in magazines and
newspapers within the jurisdiction. It can generally be inferred from a high volume of sales,
together with substantial advertising expenditures and other promotions, without any direct
evidence of consumer appreciation of the mark, or where the recognition of the mark is so great,
it can even be established despite no actual sales having occurred in Australia. Whether a
reputation can actually be established, however, is a question of fact and subject to the individual
perceptions of the Registrar or the Court.
Use as a trade mark trade mark which is likely to deceive or cause confusion
The second question is whether, having regard to actual reputation and potential use of the mark,
consumers would be caused to wonder if the products of the two traders were associated. In
making such an evaluation, it is not necessary for the goods or services to be of the same
description. This enabled, for example, McDonalds to successfully oppose the registration of
McBABY because of the McLanguage which was immediately and widely understood, without
further explanation, as referring to the opponent and its operations.
On the other hand, this decision is to be compared with other decisions, including another
McDonalds case, in which the trade mark the golden boomerangs and a symbol of two
boomerangs crossed to resemble an M were held not to be the subject of a Section 60 objection
on the basis that the substantial reputation of McDonalds and the golden arches mark meant
that no consumer would be likely to wonder whether there was an association. A similar finding
was made in respect of UBAY and EBAY, leading to the inference that despite protection of
famous marks in Australia, too much notoriety may lead to the demise of this protection.
It must also be noted that use for the purposes of Section 60 must be use as a trade mark, that is,
use to indicate the origin of the traders goods. Consequently, any famous mark which in some
way describes an attribute of the goods may not be protected, regardless of the extent of
reputation, if it can be shown that the accused has used the mark for some reason other than to
distinguish its goods from the goods of other traders. It is also of particular issue where poor
marketing results in the mark becoming used generically to describe or identify the particular
goods or services.
In Australia, Section 120 of the Trade Marks Act 1995 (Cth) is the general infringement
provision as follows:
Section 120:
(1)

A person infringes a registered trade mark if the person uses as a trade mark a sign that
is substantially identical with, or deceptively similar to, the trade mark in relation to
goods or services in respect of which the trade mark is registered.

(2)

A person infringes a registered trade mark if the person uses as a trade mark a sign that
is substantially identical with, or deceptively similar to, the trade mark in relation to:

(a) goods of the same description as that of goods (registered goods) in respect of which
the trade mark is registered; or
(b) services that are closely related to registered goods; or
(c) services of the same description as that of services (registered services) in respect of
which the trade mark is registered; or
(d) goods that are closely related to registered services."
Trade marks which are famous, or well known in Australia, are protected by Section 120(3)
which provides:
(3)

A person infringes a registered trade mark if:

(a) the trade mark is well known in Australia; and
(b) the person uses as a trade mark a sign that is substantially identical with, or
deceptively similar to, the trade mark in relation to:
(i) goods (unrelated goods) that are not of the same description as that of the
goods in respect of which the trade mark is registered (registered goods) or are
not closely related to services in respect of which the trade mark is registered
(registered services);
(ii) services (unrelated services) that are not of the same description as that of the
registered services or are not closely related to registered goods; and
(c) because the trade mark is well-known, the sign would likely to be taken as indicating
a connection between the unrelated goods or services and the registered owner of the
trade mark; and
(d) for that reason, the interests of the registered owner are likely to be adversely
affected.

(4)

In deciding, for the purposes of paragraph 3(a), whether a trade mark is well known in
Australia, one must take account of the extent to which the trade mark is known within
the relevant sector of the public, whether as a result of the promotion of the trade mark
or for any other reason.

Section 120(3) is subject to multiple interpretations and the concise meaning of the section
remains unclear. However, what is clear is that whichever interpretation is adopted, the use of a
mark that is substantially identical or deceptively similar to a registered mark with suitable
reputation in Australia, may constitute infringement even where the use is in respect of unrelated
goods or services. The debate of whether the section gives rise to an anti-dilution provision, akin
to the position in Europe and in the United States, or whether it is simply a manifestation of the
common law action of passing-off, will simply determine the extent to which the owner of the
famous mark could enforce such rights.
As yet, there is no relevant case law in Australia to use as a guide in relation to Section 120(3).
However, the preferred view among Australian trade mark academics appears to be that Section

120(3) is a statutory reflection of the common law rules in relation to passing off, rather than a
specific anti-dilution provision.
Common Law Action of Passing Off
Finally, famous marks in Australia can be protected under a common law action of passing-off,
even where the mark is not registered or the use is not in respect of the same or similar goods or
services. The elements are confined to:
(1) a business reputation associated exclusively with the mark in question (Cadbury Schweppes
v Pub Squash);
(2) a misrepresentation by the defendant that would suggest an association between itself and
the owner of the famous mark (SA Brewing Company v 20th Century Fox); and
(3) as a consequence of the misrepresentation, damage or the possibility of damage to the owner
of the famous marks reputation having occurred.
Here, the category of misrepresentation is slightly broader than the likely to deceive or cause
confusion requirement of Section 60 in that the misrepresentation provision of the common law
may include use that would not fall within the definition of use in the Trade Marks Act, such
as inaccurate statements made involving the famous mark.
Conclusions
Protection will extend to famous marks in Australia even in the absence of registration per se, or
registration in respect of similar goods or services. However, such protection will generally only
extend to the active owner of a famous mark, who monitors the activity of other traders and takes
action to oppose, or remove any mark that is likely to cause deception or confusion as a result of
their trade marks reputation, or sue for infringement or any misrepresentation that suggests an
association with the famous mark. The absence of a requirement for registration of the reputable
mark also means that registered trade marks can be subject to removal if infringing use is
allowed to continue for such time that the infringing user gains its own reputation in the mark.

BRAZIL
Contributor:

Luiz Edgard Montaury Pimenta and Clarissa Castro Jaegger

MONTAURY PIMENTA MACHADO & VIEIRA DE MELLO
Rio de Janeiro
Brazil

The Brazilian Trademark Law is now completing its fifteenth anniversary, and some provisions
deserve comments, among them how the Brazilian Trademark Office is dealing with the
recognition of the HIGH REPUTATION status by a given mark.
Law n 9.279, issued on May 14, 1996 has introduced special provisions so as to determine
whether a mark should or should not be considered Well-known or Highly Reputed.
In what is referred to as a Well-known mark, such Law provides special protection to a kind of
mark that, even though it has not yet achieved the status of a Highly Reputed mark, it is Wellknown in its field of activity. It is the so-called Well-known mark (Section 126 of Law 9.279/96
and Article 6bis of the Paris Convention), which is, in fact, an exception to the Principle of
Territoriality, since the trademark protection exceeds the territorial limits of its country of origin.
The special protection recognized that Well-known marks are limited to their field of activity.
Thus, the owner of a Well-known mark may prevent third parties from registering the same
and/or similar mark to identify the same and/or similar goods/services.
The examination on whether a mark shall be considered Well-known in its field of activity is
conducted by the Examiner on a case-by-case basis, according to the kind of evidence provided
in each case by the trademark owner. Yet, it is important to mention that once a mark is
determined as being Well-known by the Brazilian Trademark Office, such condition is
compelling only between the parties of the specific case.
After almost 8 (eight) years from the issuance of the Brazilian Trademark Law (Law 9.279/96),
the Brazilian Trademark Office finally issued Normative Act n 110 on 27 January 2004, which
governed the proceedings concerning how and under what conditions the Brazilian Trademark
Office would recognize the status of High Reputation for certain marks.
Highly Reputed marks have been foreshadowed in Brazilian Intellectual Property Law since its
promulgation in 1996, in order to protect famous marks in relation to all branches of activities.
However, the provisions established in relation to Section 125 of the Brazilian Trademark Law
were dependent on the respective regulation, which eventually occurred with Normative Act n
110 on 27 January 2004.
According to such Normative Act, the recognition and the respective endorsement of the special
protection status granted to High Reputation marks will be verified during the examination of an
objection procedure filed against a third partys applications/registrations based upon the
reproduction or imitation of a High Reputation mark. In view of the foregoing, the appropriate
administrative proceedings through which a claim of High Reputation mark will be examined
and (possibly) recognized are: (1) an opposition or (2) an administrative nullity action.

Other than under these incidental proceedings, the Brazilian Trademark Office will not address
the issue of special protection established under Section 125 of the Trademark Law.
Furthermore, such Normative Act enumerates a non-exhaustive list of evidence that the owner of
the alleged Highly Reputed mark shall submit to the Brazilian Trademark Office, at the objection
procedure, so as to demonstrate such High Reputation condition, such as:
a) date of first use of the mark in Brazil;
b) description of the consumer or potential consumers or market of goods/services to which the
mark is applied;
c) the market portion which effectively recognizes the mark;
d) identify by means of an opinion or market survey or by any other applicable means, the
portion of consumers or potential consumers who immediately and spontaneously identify
the mark and associate it with the goods/services to which it is applied, essentially by reason
of its tradition and favorable market perception;
e) identify by means of an opinion or market survey or by any other applicable means the
portion of consumers from other market segments who immediately and spontaneously
identify the mark and associate it with the goods/services to which it is applied;
f) identify by means of an opinion or market survey or by any other applicable means the
portion of consumers from other market segments who immediately and spontaneously
identify the mark due to its tradition and rank in the market place;
g) methods of commercialization of (the goods/services identified by the) mark in Brazil;
h) the publicity channels used to promote the mark; methods of dissemination of the mark in
Brazil and, possibly, abroad;
i) time length of effective dissemination of the mark in Brazil and, possibly, abroad;
j) the geographic amplitude and the time extension related to marks usage in Brazil and,
fortuitously, abroad;
k) the geographic area of actual sale of (the goods/services identified by the) mark in Brazil and,
possibly, abroad;
l) amount invested by the trademark owner in advertisement/publicity of the mark in Brazilian
media for the last 3 (three) years;
m) the sales volume of the products identified by the mark or the services revenue in the last 3
(three) years; and
n) the economical value of the mark in relation to the enterprises assets.
Once the Office accepts the evidence provided by the Highly Reputed mark owner and
recognizes the High Reputation status of the mark, the recognition of such is recorded in the
Brazilian Trademark Offices records and published in the Official Gazette.
Thus, some measures can be taken by the trademark owner in order to target a favorable
environment, increasing the companys chances of obtaining the Highly Reputed status for its
mark in Brazil.

In view of the above, if a Brazilian or a foreign company successfully demonstrates that its mark
has recognition outside its field of activities or related areas, and is able to provide evidence as to
as many requirements as set forth in Normative Act n110 as possible, the chances of obtaining
the recognition of High Reputation can be considered as quite favourable.
It is important to clarify that certain marks, which are mostly used by sophisticated and highly
technical consumers, do not eliminate the possibility of recognition of the Highly Reputed status.
According to the underlying principle on the definition of a Highly Reputed mark, the mark must
be immediately and spontaneously recognized by a significant portion of the consumers even
though those have never acquired or used the products or services actually identified by the
mark.
Regarding the protection term for the incidental recognition of the High Reputation status, the
Brazilian Trademark Office will proceed with the appropriate recordal of such new condition in
its records, which will remain in force for 5 (five) years. In the meantime, the owner of the
famous mark will be free from the obligation of submitting new evidences of such fame to the
Brazilian Trademark Office and is entitled to enforce its rights against third parties that seek
registration of an infringing mark even in a different and unrelated class, since the protection
embraces all branches of activities.
Additionally, Section 196 of the Brazilian Trademark Law foresees that the penalties against
Highly Reputed marks shall increase significantly.
Another extremely relevant effect of the administrative recognition of the High Reputation status
of a mark is the possibility of recordation of such status before other equivalent Agencies and
appropriate Entities responsible for registration of domain names in Brazil, such as NIC.Br (the
Brazilian Registrar). Once notified of the status of fame of a mark, those Agencies may reject
future domain name applications, which consist of an imitation or reproduction of the Highly
Reputed mark.
It is of utmost importance to emphasize, however, that Normative Act n 110 does not determine
that the Brazilian Trademark Office is compelled to reject ex officio any third partys
application/registration for a mark that may infringe the famous mark. That is to say that, to
assure the enforcement of its rights, the owner of a Highly Reputed mark must nonetheless be
vigilant and file oppositions/nullity actions against third parties applications/registrations for
infringing marks and should not simply rely on the Offices assessment.
The Normative Act also established different official fees for filing oppositions and
administrative nullity actions on the grounds of High Reputation, which are much higher than the
ones for regular oppositions/nullity actions. Please note that these fees are applicable to every
opposition and/or administrative nullity action filed on the grounds of High Reputation, except
when the mark has previously been recognized by the Brazilian Trademark Office as a Highly
Reputed mark in another case.
Under these circumstances, it is interesting to highlight that the Brazilian Trademark Office has
already recognized the High Reputation status of several marks, since the issuance of Normative
Act n 110 on 27 January 2004, such as:

10

ABSOLUT

11

A demonstration of the concrete enforcement of the Normative Act by the Brazilian Trademark
Office could clearly be observed after the recognition of the High Reputation status of the mark
VISA, when such Agency rejected 15 (fifteen) applications filed by different third parties
containing variations of the mark VISA in unrelated classes, such as: VISA (classes 25 and
40), TRANSVISA (class 38), VISATUR (class 38), VIZA (class 38), VISA E (class
08), A AUTOVISA (class 40), VISA LATICNIOS (classes 29, 30, 31, 32 and 38),
DIVISA (class 40), PETROVISA (class 07), COOPERVISA (class 31), on the basis of
Article 125 of the Brazilian Trademark Law, by means of a single publication in the Official
Gazette.
Besides the objection procedure required by the Brazilian Trademark Office, some companies
are filing Court Actions before the Brazilian Federal Courts aiming to obtain the protection in
question in a judicial manner. This occurs mostly due to the lack of a direct administrative
procedure to recognize such status (and not to await an eventual objection procedure), as well as
due to the huge backlog of work currently experienced by the Brazilian Trademark Office. Some
of these Court Actions have obtained favorable decisions, and some are still pending, but in all
cases the Brazilian Trademark Office is claiming this procedure to be groundless. Until now, just
a few marks have obtained the recognition in Court, such as ABSOLUT, owned by V&S VIN
& SPRIT AKTIEBOLAG, GOOD YEAR, owned by THE GOODYEAR TIRE & RUBBER
COMPANY, and LYCRA, owned by E.I. DU PONT DE NEMOURS AND COMPANY.
Indeed, Normative Act n 110 has represented a step ahead in the protection of trademarks in
Brazil and a warranty to Brazilian and foreign companies that invest massively in advertisement
and publicity to create solid marks. Therefore, the Brazilian Trademark Office has now one more
tool to avoid third parties from obtaining undue benefits from Highly Reputed marks.

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CANADA
Contributor:

Douglas G. H. Fyfe
GOWLINGS
Ottawa
Canada

While Canadas Trade-marks Act (the Act) does not expressly provide for famous marks,
Canadian policy makers have long recognized that very well-known marks are vulnerable to
imitation. When the Act was drafted in the 1950s, the Trade Mark Law Revision Committee
noted that famous marks run an increased risk of confusion with junior marks, even where those
junior marks pertain to unrelated industries. As a result of the Committees recommendations,
Section 6 of the Act now defines confusion as an association between two sellers wares or
services, regardless of whether or not the[ir] wares or services are of the same general class.
Section 6(5) also specifies that, in assessing confusion, regard must be had to the extent to
which [the marks at issue] have become known; the length of time they have been in use; as
well as all surrounding circumstancesi, meaning that confusion analyses carried out under the
Act tend to favour famous marks. As a result, famous marks have a leg up in opposition
proceedings, as well as actions for passing-off that is, the practice of misrepresenting the
source of ones wares or services through the misuses of anothers trade-mark, which is
prohibited by Section 7(b) of the Act.
The Committee did not go so far as to recommend special protections reserved for famous
marks, asserting that [a]ll marks have a certain degree of fame [and] there should be a single
formula for all trade mark comparisons ..ii However, whether intentionally or not, the fame of
a mark is also relevant to a number of other provisions of the Act. First, the distinctiveness of a
mark is a factor to be considered in opposition proceedings,iii as well as expungement
proceedings.iv In order to be valid, a mark must be distinctive that is, capable of
distinguishing its owners wares and services from those of other sellers. Because the Act
recognizes that distinctiveness stems not only from a marks novelty but also from its extensive
use and promotion,v a marks fame can facilitate its prosecution; make it easier to oppose
applications for similar marks; and aide in expungement proceedings.
Importantly, a mark can lack distinctiveness by virtue of another marks fame, even if the
famous mark has not been used in Canada; spill-over notoriety from use abroad may be
sufficient, meaning that, in some cases, famous marks used abroad may enjoy some protection in
Canada.vi In fact, spill-over notoriety can (in rare cases) support the registration of a famous
mark in Canada, even if that mark has not been used in Canada or registered abroad, provided
that (inter alia) it has become well-known across a substantial portion of Canada. Section 5 of
the Act sets out the limited number of ways in which a mark can become made known, which
include advertising in Canada, as well as radio advertising transmitted abroad but ordinarily
received by Canadians.
Finally, and most importantly, Section 22 of the Act prohibits the use of anothers trade-mark in
a matter that is likely to have the effect of depreciating the value of the goodwill attaching
thereto a provision which the Trade Mark Law Revision Committee is said to have included

13

specifically for the purpose of protecting famous marks.vii The provision remained surprisingly
disused until the Supreme Court of Canada (the SCC) issued a pair of decisions in 2006
Matel v. 3894207 Canada Inc. and Veuve Clicquot Ponsardin v. Boutiques Cliquot Lte
clarifying both the functions of Section 22, as well as the issue of whether confusion can arise
where the parties wares or services are unrelated.
With respect to confusion, the SCC confirmed that, in accordance with the definition of
confusion set out in Section 6 of the Act, confusion can exist even where the parties wares or
services are unalike, although product line will generally represent a significant obstacle for
even a famous mark to leap over.viii The Court provided the example of BUCKLEYS BRAND,
while very well-known in Canada, is so strongly tied to cough mixture that a restaurant by the
same name would be unlikely to cause confusion.ix
With respect to Section 22, the Veuve Clicquot decision raised a number of important points.
First, the SCC held that Section 22 does not depend on a finding of confusion; the claimant need
only show that the defendant has used marks sufficiently similar to evoke in a relevant
universe of consumers a mental association of the two marks that is likely to depreciate the value
of the goodwill attaching to the [claimants] mark.x Second, the SCC established a four part test
for determining whether depreciation is likely: i) the defendant must have used the claimants
registered trade-mark; ii) the claimants trade-mark must have significant goodwill attached to
it, and while the mark need not be famous, the extent of its recognition and market penetration
are relevant; iii) the defendant must have used the claimants mark in a way likely to affect the
marks goodwill that is, the claimants goodwill and the defendants use must be linked in the
minds of consumers; and iv) the likely result of this linkage must be the depreciation of the
claimants goodwill.xi Finally, the SCC also hinted at the sort of harm depreciation
encompasses, suggesting that Section 22 is at least broad enough to include the concepts of
blurring (i.e. a loss of brand image or distinctiveness) and tarnishment (i.e. creating a
negative association with a mark).xii
There remain, however, limits to Section 22s usefulness to famous mark owners. Some courts
have held that Section 22 only applies where the marks at issue are identical or nearly identical,
even though the SCC said they need only be sufficiently similar.xiii Furthermore, Section 22 is
only implicated where the defendant has used the mark as defined, somewhat restrictively, by
Section 4 of the Act (for example, a mark must generally be affixed to wares or their packing to
be used in association with said wares); however, it is worth noting that Section 22 does not
require use on the part of the claimant, meaning that it is applicable to famous marks that have
goodwill in Canada but are registered based only on use abroad.xiv
In summary, the Act contains a number of provisions that benefit famous mark owners, and the
SCC has done a great deal in recent years to expand these protections. In particular, its ruling
that confusion can arise even where dissimilar wares or services are involved did much to
improve the lot of famous marks in Canada. However, the countrys tribunals apparently remain
reluctant to find confusion in such cases. Moreover, the exact nature and breadth of Section 22
also remains unclear. As a result, further judicial consideration will be necessary to solidify
Canadas position with respect to famous marks.
______________________________________________________________________________
i

R. Scott MacKendrick & Christina Capone Settimi, The State of Famous Marks in Canada The Licensing
Journal (May 2007) 9 at 10.

14
ii

Christopher Robinson Q.C., The Trade-marks Act of 1954: A Review of Some of its Features (1959), 32
Canadian Patent Reports 45 (Sec. 1) at 53.
iii
Trade-marks Act, R.S.C. 1985, c. T-13, ss. 38(2)(c).
iv
Ibid., ss. 18(1)(b).
v
Ibid., ss. 12(2) (specifies that a mark not inherently distinctive of a particular seller can become distinctive through
use).
vi
See Robert G. Howell, Depreciation of Goodwill: A Green Light for Dilution from the Supreme Court of
Canada in an Accommodating Infrastructure (2008) 17 Transnational Law & Contemporary Problems 689 at 701.
vii
Christopher Robinson Q.C., The Trade-marks Act of 1954: A Review of Some of its Features (1959), 32
Canadian Patent Reports 45 (Sec. 1) at 61.
viii
Matel, Inc. v. 3894207 Canada Inc., 2006 SCC 22 at para. 78.
ix
Veuve Clicquot Ponsardin v. Boutiques Cliquot Lte., 2006 SCC 23 at para. 32.
x
Ibid. at para. 38.
xi
Ibid. at 47-69.
xii
Ibid. at para. 67.
xiii
See e.g. BMW Canada Inc. v. Nissan Canada Inc., 2007 FC 262 at para. 99, revd on other grounds 2007 FCA
119.
xiv

See Robert G. Howell, Depreciation of Goodwill: A Green Light for Dilution from the Supreme
Court of Canada in an Accommodating Infrastructure (2008) 17 Transnational Law & Contemporary
Problems 689 at 706.

15

CHINA
Contributor:

Mrs. Pearl Gao

INSIGHT IP
Beijing
China

A well-known (also commonly known as famous) trademark, as it is identified in China

following the TRIPS Agreement, can enjoy a broader and stronger scope of protection compared
to an ordinary trademark. In any specific case, this strengthened protection will be reflected in
two ways: (1) with well-known status, the threshold to prove infringement is much lower; and
(2) a well-known mark can enjoy some protection in respect of dissimilar goods or services.
There is no special Trade Mark Registry System in China in which well-known trademarks can
be registered. Since the revision of the Chinese Trade Mark Law in 2001, recognition and
protection of well-known registered trademarks is primarily limited to the situation, where
registration is being sought for a later identical or similar mark, or where there has been use on
dissimilar goods or services by the allegedly infringing mark. If the use has been on similar
goods, the Court will avoid using the term well-known mark in the decision and will just
mention that the mark enjoys a reputation.
China is a first-to-file jurisdiction for trademarks, which have to be registered before they get
protection. However, there are special regulations to protect unregistered well-known trademarks
and the protection is no less strong than for registered marks, although protection is restricted to
the same or similar goods, while registered well-known trademarks enjoy the protection of
Cross-category.
It is often the case that some famous brand owners choose to register their well-known mark in
all 45 classes for defensive purposes. An example of where this was vindicated was in the BMW
v Century Baoma case. In its decision dated December 15 2009 on this case, the Supreme
Peoples Court recognised the well-known status of the registered trademarks BMW, the BMW
logo and the Chinese Version of BMW (
) in respect of automobiles and confirmed the
infringing nature of the BMW logo on clothing products in Class 25. BMW had obtained a
territorial extension via the Madrid System in China for the BMW word and Logo marks for
Class 25 goods.

Legal Procedure for Registration

Chinese Administrative and judicial trade mark authorities include the State Administration of
Industry and Commerce (SAIC) and the Supreme Peoples Court (SPC). These bodies have
promulgated laws, regulations and interpretations pursuant to which China has, since 2001,
developed its own system for protecting and recognizing well-known trade marks. A strict and
complicated legal procedure must be followed. The statutory provisions which govern the
procedure consist mainly of:

16

1.

Trade Mark Law (2001);

2.

Implementation Regulations under Trade Mark Law (2002);

3.

Rules on Recognition and Protection of Well-known Trade Marks (2003);

4.

The Interpretation of the Supreme People's Court of Several issues Regarding Application of
Laws in Trial of Civil Disputes Involving Computer Network Domain Names (2001);

5.

Interpretation of the Supreme People's Court of Several Issues Regarding Application of

Laws in Trial of Trade Mark Civil Disputes (2002);

6.

Specific Rules for Recognition of Well-Known Trade Marks (2009); and

7.

The Interpretation of Several Issues Regarding Application of Laws in Protection of WellKnown Trade Marks in Trade Mark-Related Civil Disputes (2009).

The identification of well-known trademarks in China is in conformity with the widely-used

international principle, which is Case-by-case passive protection doctrine. It is only once the
recognizing authority receives the complaints of a trademark owners disputes and requests to
determine that its trademark is a well-known trademark, can the trademark be identified as being
well-known.
There are two ways to identify a well-known trademark. One way is through the Administrative
route and the other is through the Judicial route.
Administrative route
In China, one avenue to prove well-known status is through an administrative proceeding at the
Trade Mark Office (CTMO) or the Trade Mark Review and Adjudication Board (TRAB). The
CTMO has the duty to review a recognition request arising from an opposition or a raid action,
while the TRAB may review recognition requests in connection with opposition or cancellation
proceedings. Examples of relevant case law include:
Opposition:

MARTELL in the name of Martell & Co. is recognized as a well-known trademark in respect
of alcohol beverages in Cl. 33 in 2010.
Raid Action:

SONY in the name of Sony Corporation is recognized as a well-known trademark in respect of

Cinematographic cameras, image/sound recording, transmitting apparatus in Cl. 9 in 2010.
Review of Opposition:

KENWOOD in the name of Kenwood Corporation is recognized as a well-known trademark in

respect of radio and viedo apparatus in Cl. 9 in 2010.

17

Judicial route
Qualified civil courts may also recognize the well-known status of a trade mark. Judicial
identification is often put forward in cases of trademark infringement and domain name
infringement.
In the past, Safeguard, IKEA, Walmart, Starbucks, Sothebys have been successfully
recognized as well-known trademarks by the Peoples Courts.
Usually, the following relevant materials may be used as the supporting materials of a wellknown trademark:
1.

showing the extent of knowledge by the relevant public;

2.

showing the duration of the trademark, including the materials involving the history and
scope of the use and registration of the trademark;

3.

showing the duration, extent and geographical scope of any publicity work, including ways
of advertising and promotion, geographic scope, type of publicity media and the quantity of
the launched advertisements;

4.

evidence that the same mark has always been protected as a famous one in China, or in other
country or region;

5.

evidence regarding the previous 3 years of output, sales volume, profit payment and tax
turnover and sales territory of the goods or services using this trademark.

Summary
To ensure broad protection of their marks, brand owners should develop well-known status
maintenance strategies to address future potential infringements.

18

FINLAND
Contributor:

Joose Kilpimaa
KOLSTER OY AB
Helsinki
Finland

Trademarks in Finland are governed by the Trademarks Act 1964. Section 6 of the Trademarks
Act states the following:
Trade symbols shall be regarded under this Act as liable to cause confusion only if they apply
to goods of identical or similar type.
Notwithstanding the foregoing, the confusability of trade symbols may be judged in favor of a
symbol that has a reputation in Finland where the use of another's trade symbol without due
cause would constitute unfair exploitation of, or action detrimental to, the distinctive character
or fame of the earlier trade symbol.

The above section is in accordance with relevant European Community legislation.

It can thus be seen that trademarks with a reputation in Finland (i.e. Well-known or Famous
Marks) are more widely protected than regular trademarks. The protection of trademarks with a
reputation exceeds the classes covered in the Trademark Register.
The main rule is that in a case of a conflict, it is the relevant Court of Law that determines
whether the trademark in question in fact has a reputation.
List separate from the Trademark Register
On 6 June 2007, the National Board of Patents and Registration of Finland (NBPR) decided to
establish a list into which trademarks with a reputation in Finland can be entered upon
application. The list, which was established within the framework of current legislation, is a
database which is separate from the Trademark Register. The list is a public document and
anyone may obtain a copy of it for a fee.
The purpose of the list is to serve commerce and industry, agents and all other stakeholders that
need information regarding reputable marks. The list is helpful when conducting preliminary
examinations or tests of confusing similarity of trademarks, and should thereby have a preventive
effect on trademark disputes.
If the NBPR, while processing a trademark application, finds a confusingly similar mark in the
list, this fact will be notified to both the person who filed the trademark application and the
owner of the earlier trademark with a reputation. They are both notified regardless of the class/es
in which the mark is sought to be registered.
In the registration process, the NBPR will not take the information in the list into consideration
as a relative obstacle to registration. It is therefore up to the owner of the earlier trademark with a

19

reputation to decide whether he or she wants to file an opposition against a later registered
trademark. The final outcome of an opposition procedure will not automatically change the
information contained in the list.
Conditions for entry
A condition for entry in the list is that the trademark has a reputation in Finland, as defined in
Section 6(2) of the Finnish Trademarks Act. The concept of a trademark with a reputation is
based on Community legislation, the interpretation of which is supervised by the Court of Justice
of the European Communities.
The goods and/or services for which the trademark is considered to have a reputation are entered
in the application and the list. Also, the target group/s in which the mark has proven reputation
will be entered in the list by the NBPR. The target group which can prove reputation in the mark
should be indicated in the application. If no target group is provided in the application, the NBPR
considers all Finns to be the target group.
Evidence of the reputation must be provided with the application. The NBPR assesses the
reputation of the mark on the basis of its target group. The NBPR will take into account all
relevant circumstances, such as the market share, the marketing costs, how intensively and how
long the mark has been used, and the geographical extension of use.
In terms of geography, the mark must enjoy a reputation in a substantial part of Finland. On the
basis of precedents of the Court of Justice of the European Communities, the NBPR also requires
that the trademark must be familiar to a considerable part of the target group.
The market share of goods carrying the mark and their position in the market are valuable
information when the NBPR assesses the reputation of the mark. The market share, expressed as
a percentage of the whole market, immediately shows how many people in the target group
actually buy the goods carrying the mark.
Market and reputation surveys are considered to be particularly good evidence. Any survey
accompanying the application must be carried out by an independent and impartial organisation.
In order to assess whether the survey is reliable or not, the NBPR needs to know who carried out
the survey, what the target group of the survey was, the number of interviewees and their age and
gender. The size of the target group determines the number of interviewees required; however, if
the target group includes all Finns, this should also be reflected in the number of interviewees.
The NBPR also needs to know the survey method and the circumstances in which the survey was
done. The survey report should therefore also include the questions asked in the survey and the
order in which the questions were asked and how they were asked: interviewees spontaneous
awareness of a mark gives stronger proof that the mark has a reputation than prompted
awareness, i.e. a survey where interviewees have been asked leading questions. The survey
report must be submitted in its entirety together with the application no abridged versions are
accepted so that the NBPR will be able to assess the value of the evidence.
Advertising and marketing material can also be used. The nature and quantity of the material
often show how intensively and how long the mark has been used, and the geographic extent of
the use. The total amount of money used for advertising and marketing may also be an important
part of the proof the relative proportion of the marketing budget to the overall marketing costs in
the particular line of business can be indicated. Different kinds of certificates of reputation issued

20

by trader interest organisations or other organisations within the target group can be used to
prove how intensively, how long and how extensively the mark has been used. Earlier trademark
registrations can be used to give indirect proof of how long and how extensively the mark has
been used. It should be noted that registration is not a condition for reputation.
The value of the mark may also be an indication of reputation. Details of different kinds of
surveys or listings of the value of the mark, as well as proof of licensing, can be provided to
show how valuable the mark is.
Annual reports or other material about the trademark owners activities often gives indirect
information about the use of the mark. Sales volume and turnover may also form a part of the
proof. When assessing these details, the NBPR must however take into account the size of the
market and the nature of the goods. This is the reason why details of the size of the relevant
market must be provided so that the NBPR will be able to compare the sales figures. The proof
of sales, however, mostly supports the proof of market share and the proof of trademark
awareness.
Court or authority decisions concerning the reputation of the mark may also be used as proof.
The NBPR is not however bound by such court or authority decisions even though they actually
can have an effect on its decisions.
Marks entered in the list or removed from the list are published in the Trademark Gazette.
Processing of applications
The application fee must be prepaid before the application will be processed. The Finnish Act on
the Openness of Government Activities (1999/621) is applied to the application documents. The
material submitted with the application is therefore open for the public inspection in the same
way as the material submitted with an ordinary trademark application.
The NBPR may, if necessary, contact the trademark owner by mail and request supplemental
information to be submitted within 8 weeks. This time limit is extendible by a further 8 weeks. If
this is not complied with, the NBPR will make a decision on the basis of the material already
submitted.
The NBPR can, upon request, alter the pending application for example so that the target group
is broadened or reduced, or goods or services are added or removed.
The NBPR will send a reasoned notification, if it still, after having received further details, finds
that the mark cannot be entered in the list. There is no appeal against such notification. If the
mark is admitted to the list, the NBPR forwards a notification of such entry and requests
payment of an entry fee of 800 euros. If the fee is not paid, the NBPR deems the application to
have lapsed and the mark will not be entered in the list. As soon as the NBPR has received
payment, the mark is entered in the list and the entry is published in the Trademark Gazette. The
NBPR also provides notification of the entry and an extract from the list is sent.
Validity and renewal
An entry in the list will remain in force for five years from the date of entry. This can be renewed
for a further period of five years by filing an application with the NBPR. It is not possible to

21

apply earlier than six months before or later than six months after the expiry of the term of five
years.
In the renewal process, the trademark owner has to submit proof of the reputation of the mark in
the same way as in the application process. However, when renewing an entry, the proof may be
lesser, depending on the case. Also the conditions for entry in the list are examined by the NBPR
in the same manner as in the application process. The NBPR may therefore request additional
information from the trademark owner.
The entry can be altered in the renewal process: for example, the target group can be broadened
or new goods or services can be added. The reason for this is that the fees and processing of a
renewal application do not differ from the processing of a completely new application.
Removal from the list
Anyone may request removal of an entry from the list, if a mark has been entered contrary to the
conditions in Section 6(2) of the Finnish Trademarks Act, or if the reputation of a mark no longer
meets the conditions in that provision. The party who wishes to have the mark removed has to
send a request to the NBPR with the details of the mark and the reasons why it should be
removed. A fee of 500 euros is applicable for filing the request. A partial removal is also
possible.
No right of appeal against decisions concerning the list
The purpose of the list is to increase awareness of trademarks with a reputation and thus prevent
conflicts. As the registration authoritys decisions about the list are an additional information
service, they are not decisions that have legal effect and could be taken to a court of law or other
independent judicial organ in accordance with Section 21 of the Finnish Constitution.
If the NBPR does not admit a trademark to the list, or removes a trademark already entered in the
list, the holder of the right may request a re-examination from the NBPR. A new application may
be successful if there has been a change in the circumstances or if new material is submitted to
the NBPR together with a new application.

22

FRANCE
Contributor:

Mr. Marc-Roger Hirsch

Hirsch & Associs
Paris
France

Specific protection, based on civil liability, regarding Famous trademarks, has been codified in
article L.713-5 of the French Intellectual Property Code, which reads :
The reproduction or imitation of a trademark that enjoys a reputation for goods or
services that are not similar to those designated in the registration of said
trademark, renders the author thereof civilly liable if it is of a nature to cause harm
to the said proprietor or if this reproduction or imitation constitutes unjustified
beneficial use of said mark.
The provisions of the previous paragraph apply to the use of trademarks that are
well-known within the meaning of Article L.6 bis of the Paris Convention for the
Protection of Industrial Property.

This article is an adaptation of article 5,2 of the Directive N.89/104/EEC; thus, it should be
interpreted in the light of this article 5,2 of the Directive.
It must also be noted that Article 1382 of the French civil Code provides general protection
against acts of unfair competition and that obviously using a famous trademark by a third to
promote his own activity may also fall under this Article 1382, which deals with torts caused to
the owner of a trademark.
None of these texts give a precise definition of what comprises a trademark that enjoys a
reputation. However, European and French case law have given the following definition of such
a trademark which consists of a mark known by a significant part of the public concerned by the
products or services which it covers1. Nowadays, this definition may also apply to well-known
trademarks.
The relevant public consists of average consumers of the goods or services for which that mark
is registered, who are reasonably well informed and reasonably observant and circumspect2.
Judges have the supreme power to decide whether a trademark does or does not enjoy a
reputation. Reputation is generally proved by the method of accumulation of criteria such the
1

ECJ, General Motors, September 14 1999, case C-375/97, point 31 ; High court of Paris, 3rd div., 3rd sect., October 29 2010, Danone , n10/00386 ;
rd
st
rd
th
High Court of Paris, 3 div., 1 sect., September 28 2010, Socit Intel Corporation n09/12021 ; High court of Paris, 3 div., 4 sect., July 08 2010,
Targa , n09/09866 ; High court of Paris, 3rd div., 3rd sect., June 4 2008, Activia , n08/00398 ; Court of Appeal of Paris 4th div., sect. B, March 8
th
2002, Zippo , n2000/05047 ; Court of Appeal of Paris 4 div., sect. B, Chaumet , May 18 2001, n1999/16840; Court of Appeal of Paris 4th div.,
sect. B, Azzaro , January 26 2001, n1998/26295 ; Court of Appeal of Paris 4th div., sect. B, Connexion , February 25 2000, n1997/10602.
2
ECJ, Intel , November 27 2008, case C-252/07, point 34; High court of Paris, 3rd div., 3rd sect., October 29 2010, Danone .

23

market share held by the trade mark, the intensity, geographical extent and duration of its use,
and the size of the investment made by the undertaking in promoting it3. The owner of the
trademark, who has the burden of proof4, may use opinion polls5, articles in the press6

The owner of a famous trademark may invoke article L.713-5 in two situations:
1.

The reproduction or imitation is of nature to harm the owner of the trademark

Two situations have been found having a nature to harm the owner of a famous trademark:

The first situation is a dilution of said trademark which constitutes a detriment to the
distinctive character7. This detriment is caused when that marks ability to identify the
goods or services for which it is registered and used as coming from the proprietor of that
mark is weakened, since use of the later mark leads to dispersion of the identity and hold
upon the public mind of the earlier mark. That is notably the case when the earlier mark,
which used to arouse immediate association with the goods and services for which it is
registered, is no longer capable of doing so 8.

French case law held that the use of a sign turning the mark into a household name constituted a
detriment to its distinctive character9.

The second situation is a detriment to the reputation of said trademark10 which is caused
when the goods or services for which the identical or similar sign is used by the third party
may be perceived by the public in such a way that the trade marks power of attraction is
reduced. The likelihood of such detriment may arise in particular from the fact that the
goods or services offered by the third party possess a characteristic or a quality which is
liable to have a negative impact on the image of the mark11.

Recent French case law rules along the same lines. Thus, the use of a degrading message
conveyed by the litigious products was found to be detrimental to the reputation of a famous
trademark12.
Some French decisions refer to the harm to the owner of the mark without making a distinction
between detriment to distinctive character and detriment to reputation. For instance, a decision
ruled that: the use of the sign that enjoys a reputation by a third party may harm the owner of
the mark if for this reason, there is a confusion which leading the consumer to think that the
product bearing the second sign is marketed by the owner of the mark or with his consent
through a license13.

ECJ, General Motors, September 14 1999, case C-375/97, point 27; Court of Appeal of Paris, Chaumet , May 18 2001.
High court of Paris, 3rd div., 2 nd sect., October 29 2010, n08/11236.
High court of Paris, 3rd div., 3rd sect., October 29 2010, Danone , n10/00386.
6
th
Court of Appeal of Paris 4 div., sect. A, Top 50 , June 30 2004, n03/09175.
7
ECJ, November 27 2008, case C-252/07, Intel Corporation Inc., point 29; Court of Appeal of Versailles, 12 div., sect. 1, December 2 2010, ELLE ,
n 09/08532.
4
5

ECJ, November 27 2008, case C-252/07, Intel Corporation Inc., point 29.
th
Court of Appeal of Versailles, 12 div., sect. 1, December 2 2010, ELLE , n 09/08532; Cour de Cassation, com. div., March 11 2008, n 06-15594.
10
ECJ, June 18 2009, case C-487/07, LOral SA, point 40.
11
Ibid.
12
Court of Appeal of Rennes, 2nd com. div., April 27 2010, n09/00413, Socit JBC HOLDING SARL.
13
High Court of Paris, 3rd div., 1st sect., February 09 2010, n09/10263.
9

24

2.

Unjustified beneficial use of the trademark

Unjustified beneficial use consists of benefiting from the reputation of a famous mark without
paying a cent.
Such unjustified use constitutes parasitim (or free-riding)14 which relates not to the
detriment caused to the mark but to the advantage taken by the third party as a result of the use
of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of
the image of the mark or of the characteristics which it projects to the goods identified by the
identical or similar sign, there is clear exploitation on the coat-tails of the mark with a
reputation15.
Thus, not only the use of a trademark causing a detriment to the prestige attached to a trademark
enjoying a reputation and consequently to its economic value has been considered as an
unjustified beneficial use16 but also:

Signs which appear as declinations of the first mark17; and

The use, at the time of registering a domain name, a constituent sign of well-known marks
carrying the distinctiveness of the aforementioned marks18.

It is incumbent upon the owner of the trademark that enjoys a reputation to prove that the use or
the imitation of the mark harms him or constitute an unjustified beneficial use19.
It has been suggested that Judges should check whether the litigious use of trademarks enjoying
a reputation is not covered by a due cause20. If there is a due cause, it is not possible to enforce
L.713-5.
This concept of due cause remains to be clarified by the French courts.

14
15
16

17

ECJ, June 18 2009, case C-487/07, LOral SA, point 41.

Ibid.
Court of Appeal of Paris, 4th div., sect. A, September 17 2008.
rd

nd

High Court of Paris, 3 div., 2 sect., September 10 2010, ELITE, n08/03508. Compare Cour de Cassation, com. div., September 23 2008, n0711288.
Court of Appeal of Paris, July 04 2008, Eurostar.
19
Court of Appeal of Paris, June 2 2010, HENRIOT, n 06/16090; Cour de Cassation, com. div., February 10 2009, Cohiba, n07-20948.
20
Court of Appeal of Paris, July 04 2008, Eurostar.
18

25

GERMANY
Contributor:

Dr. Christian R. Thomas

KUHNEN & WACKER
Prinz-Ludwig-Strae 40 A
Freising
Germany

In German trademark law, there are two important aspects with respect to well-known and
famous marks. On the one hand, the fact that a trademark is well-known can help to overcome
absolute grounds for refusal of protection (e.g. a lack of distinctiveness) according to Section 8
Paragraph 3 German Trademark Act. On the other hand, according to Section 9 Paragraph 1 No.
3 of the German Trademark Act, a well-known trademark can be regarded as confusingly similar
to a younger trademark, even if the goods and/or services are not similar. The latter aspect can
play a particularly important and decisive role in infringement actions, since it is an exception to
the usual concept of trademark protection. Basically, German trademark law protects trademark
owners from the use of identical marks by third parties and from a risk of confusion, i.e.
confusion regarding the origin of products or services (through the use of similar marks).
Naturally, the protection reaches its limitation where there is no risk of confusion because the
respective goods and/or services are not similar. However, this usual scope of trademark
protection turns out to be insufficient when a trademark becomes well-known or famous, since as
its recognition grows, the trademark becomes disengaged to some extent from the goods and/or
services for which it is actually protected.
Therefore, since the 1920s German courts have acknowledged protection of well-known and
famous trademarks vis--vis trademarks covering different products or services. In order to claim
such protection the trademark had to enjoy an extraordinary recognition, i.e. a degree of
awareness of around 80 per cent of the population, and had to be duly appreciated by the
consumers. Over the years, the requirements have relaxed to a certain extent, so that by the
1980s a large number of companies (including Mercedes, Lufthansa, Ferrari and Adidas) have
been able to benefit from trademark protection for their well-known and famous marks in
Germany.
Nowadays, the protection of well-known trademarks is laid down in the German Trademark Act
which entered into force in 1995 and implements Article 5 (2) of the First Trademarks Directive
(European Law). In order to enjoy trademark protection on the basis of being well-known, a
trademark has to meet the following requirements:
-

According to established case-law of the German Federal Supreme Court trademark

protection on the basis of being well-known is to be assessed along the same principles as
in the assessment of a risk of confusion, i.e. it has to be determined whether there is a
phonetic, visual or conceptual similarity between the trademarks in question. If there is
no (absolute) similarity between the marks, no trademark protection on the basis of being
well-known can be claimed.

The trademark has to be known to a considerable portion of consumers. Unfortunately, it

is not possible to state any specific percentages in this regard. In the Dimple case (I ZR
158/82), the Federal Supreme Court considered a degree of consumer awareness of 30

26

per cent to be sufficient. However, in another case the Federal Supreme Court refused to
accept the status of a trademark to be well-known that had a degree of awareness of 30
per cent in sports circles in the Salomon case (I ZR 13/89).
According to more recent case-law of the Federal Supreme Court, e.g. the Faberge case
(ZR 100/99) from 2001, the necessary degree of consumer awareness can also result from
other factors, e.g. from the period of time and the intensity in which a trademark has been
used. When assessing the recognition of a trademark, especially the market share, the
intensity of use (level of turnover), the geographical extension and the period of time
when the mark has been used, as well as the level of related investments (sponsoring,
advertising) are to be taken into account. The European Court of Justice does not intend
to conceptually determine definite percentage rates (Pago International case (C 301-07)).
In practice, the precise extent of brand awareness established by means of market surveys
will, however, continue to play a significant part.
-

Furthermore, the younger mark has to take advantage of and/or at least affect the
distinctiveness and/or reputation of the well-known trademark. These elements often
overlap. The act of taking advantage of or affecting the distinctiveness or reputation of
the trademark has to be considered as unfair and lacking any justifiable reason. In 2010,
the German Federal Supreme Court had to assess whether the use of a well-known
trademark on scale-model cars was an infringement. This was rejected, the Court holding
that the use of the OPEL mark on scale-model cars did not take unfair advantage of the
well-known trademark without due cause (OPEL case (I ZR 88/08)).

The standard of protection in Germany for famous and well-known trademarks used to be high,
and currently still is. This is a direct result of the process undertaken by the German Courts and
the amendments to the Trademark Act in 1995. However, during recent years, Germany's
jurisdiction on famous marks has been strongly influenced by the case law of the European
Courts. Accordingly, the standard of protection develops slowly from likelihood of confusion
to a likelihood of dilution. The European Court of Justice, in one of its recent rulings in Intel v
Intelmark (C-252/07), explicitly introduced an actual dilution requirement. In addition, the Court
determined that the owner of the famous mark needs to adduce proof of detriment by either
demonstrating actual and present injury to its mark or showing of a serious risk that such injury
will occur in the future. Apparently, brand owners now need to present clear evidence of
financial loss directly associated with the use of the allegedly infringing sign and can no longer
base their argument on purely speculative, unfair market impacts. This may prove to be a very
hard task and, therefore, the message given by these recent decisions may be that famous
trademarks are denied absolute protection and the ECJ has reined in the monopoly of famous
names. It remains to be seen how this will influence the standard of protection in Germany for
famous and well-known trademarks.

27

INDONESIA
Contributor:

Mr. Estu Indrajaya

ESTU & LURY
Jakarta
Indonesia

Indonesian Legislation enables the Directorate General to refuse registration of a Mark if it has
similarity in its essential part, or in its entirety, with a well-known Mark owned by another party
for the same kind of goods and/or services.. The legislation also provides an opportunity for such
protection to extend to goods and/or services, which are not of the same kind provided
conditions regulated by Government regulation are complied with. However, no such
Government Regulations currently exist. Accordingly, under Indonesian Legislation the
protection of famous marks does not extend to goods and/or services, which are not of the same
kind.
On the other hand, the Commercial Courts of Indonesia have accepted that someone with bad
intention shall not be allowed to register a mark in order to double up a well-known trademark
to cover goods that have not been registered by the owner of the mark. Such a finding was made
by the Commercial Court of Central Jakarta District Court under case No.
1/Merek/2004/PN.Niaga.Jkt.Pst, in which the Defendant was prevented from registering
VERSUS for goods in textiles, convection and food and beverage supply because the wellknown marks VERSUS and VERSUS GIANNI VERSACE were registered in respect of
different goods or services. In making their findings, the Court made specific reference to
Indonesias ratification of the TRIPS Agreement, holding that mutatis mutandis of Article 6bis
in the Paris Convention will prevail for goods or services that are not of the same kind.
Whilst well-known is not defined in the legislation, the common understanding is that a trade
mark may be well-known if:
1.

It has already been registered in various countries;

2.

It has been recognised by the public for a long time, either in Indonesia or in various
countries as proved by advertisement, promotion, investment etc; or

3.

It is deemed as well-known by an independent surveyor which is legally appointed by the

court upon request by the owner of the well-known mark.

In time, further progression of the law will give rise to more conclusive tests of what is to be
considered well-known in Indonesia. We may also see some development via legislation and
implementation of the Government regulations in due course. What is clear, however, is that
currently Indonesia does provide protection for the owner of a famous mark where someone,
with bad intentions, attempts to use or register a mark that is well-known, both in respect of
related and unrelated goods and/or services.

28

According to the Article 6 paragraph (1) letter (b) of Trademark Law No. 15 of 2001, an
application for registration of a Mark shall be refused by the Directorate General if the relevant
Mark has a similarity in its essential part or in its entirety with a well-known Mark owned by
another party for the same kind of goods and/or services.
However, according to the Article 6 paragraph (2), the provision as referred to in paragraph (1)
letter (b) above is also applicable to goods and/or services which are not of the same kind,
provided that it fulfils certain conditions that will be further regulated by Government
Regulation. Until today, this Government Regulation on this matter has not yet been issued by
the Indonesian Government.
Furthermore, according to the Article 6 paragraph (3), an application for registration of a Mark
shall also be refused by the Directorate General if it constitutes or resembles with the name of a
famous person.
If we observe the said regulation, the law protection over the well-known trademark owner
covers only for the same kind goods or services. As such, whenever there is any third party, other
than the Starbucks Corporation which, intends to register Starbucks as a trademark for Class
3 Goods for soap, that will be allowed.
However, this opinion has now changed. The protection for a well-known trademark is not just
for the same kind registered goods or services, but also covers other goods or services.

29

IRELAND
Contributor:

Ms. Carol Gormley

FRKelly
Dublin
Ireland

Famous or well-known trade marks are dealt with under Section 61 of the Irish Trade Marks Act
1996 effectively giving statutory effect to Article 6bis of the Paris Convention:Section 61
(1) References in this Act to a trade mark which is entitled to protection under the Paris
Convention as a well-known trade mark are to a mark which is well-known in the State as
being the mark of:
(a) a national of a Convention country, or
(b) a person who is domiciled in, or has a real and effective industrial or commercial
establishment in, a Convention country,
whether or not that person carries on business, or has any goodwill, in the State; and
references to the proprietor of such a mark shall be construed accordingly.
(2) Subject to section 53, the proprietor of a trade mark which is entitled to protection under the
Paris Convention as a well-known trade mark shall be entitled to restrain by injunction the
use in the State of a trade mark which, or the essential part of which, is identical or similar
to the proprietor's mark, in relation to identical or similar goods or services, where the use
is likely to cause confusion.

The owner of a well-known trade mark is entitled to obtain injunctive relief from against the use
of identical/similar mark in relation to identical/similar goods/services regardless of whether they
carry on business or have any goodwill in the State, where the use is likely to cause confusion. It
is important to note that the rights granted to well-known trade marks are limited to an
injunction. In this regard, damages cannot be claimed under this section.
While WIPO have issued guidelines regarding the relevant information to be taken into account
when determining whether a mark is well-known, there is no clear definition of a well-known
trade mark under Article 6bis of the Paris convention. In this regard, the interpretation of what is
considered to be a well-known mark must be decided at National level and may vary from
jurisdiction to jurisdiction. This point has not yet been determined by the Irish Courts. However,
when it comes to decide the issue the courts may look at the existing case law on passing off
concerning reputation, in addition to case law from other jurisdictions.
In addition Section 11(c) of the Trade Marks Act 1996, which defines an earlier right, includes
a well-known mark within this definition;

30

Section 11(c) a trade mark which, at the date of application for registration of the trade mark in
question or (where appropriate) of the priority claimed in respect of the application, was entitled
to protection under the Paris Convention as a well-known trade mark.
In this regard, a well-known trade mark can form a separate ground in opposition and for the
purposes of filing an action for invalidity.
When discussing famous marks reference must also be made to Section 10(3) of the Trade Marks
Act 1996, incorporating Article 4 of the Harmonization directive [Council Directive
2008/95/EC].
Section 10 (3) states that a trade mark which:
(a) is identical with or similar to an earlier trade mark, and
(b) is to be registered for goods or services which are not similar to those for which the earlier
trade mark is protected, shall not be registered if, or to the extent that, the earlier trade mark
has a reputation in the State (or, in the case of a Community trade mark, in the Community)
and the use of the later trade mark without due cause would take unfair advantage of, or be
detrimental to, the distinctive character or reputation of the earlier trade mark.

If it is a National Trade Mark Registration, there must be a reputation in the State. The issue of
reputation is a matter of fact taking into account the duration, extent and geographical area in
which the trade mark is used together with the amount spent on advertising and channels of
trade. The concept of detriment to the distinctive character equates with that of the concept of
dilution under US law. This issue has not been determined by the Irish courts, but there has been
considerable case law at the EU level in relation to this issue. The general approach is that the
stronger the distinctive character and reputation of the earlier mark, the easier it will be to accept
that detriment has been caused to it. Interestingly under Section 10(3) no likelihood of confusion
is required. However, EU case law has established that a link is required between the marks
even though there is no confusion.
While Irish courts have not made a determination on many of the points above, there has been
significant EU case law in this area and in particular, the recent case of LOreal v Bellure.

31

ISRAEL
Contributor:

Ronit Barzik-Soffer
REINHOLD COHN GROUP
Tel-Aviv
Israel

TRADEMARKS ORDINANCE
(NEW VERSION) 5732-1972
Definitions
1. In this Ordinance well-known trademark - a mark well-known in Israel is a mark owned by a person who is a
citizen, permanent resident or owner of an active industrial enterprise in a Member State, and
even if the mark is not a trademark registered in Israel; the extent to which the mark is known
among the relevant circles in Israel and the extent to which it is known as a result of marketing
efforts shall also be considered when determining whether a trademark is a well-known
trademark in Israel.
"infringement - the use by a person not entitled thereto (1)

of a registered trademark or of similar mark in relation to goods in respect of which the

trademark is registered, or in relation to goods of the same description;

(2)

of a registered trademark in advertising goods of the description of goods for which the
mark is registered, or in advertising goods of the same description;

(3)

of a well-known trademark, even if it is not a registered trademark, or of mark similar

enough to it to be confusing in relation to goods in respect of which the mark is known or
in respect of goods of the same description;

(4)

of a well-known trademark which is a registered trademark, or of mark similar to it in

respect of goods that are not of the same description, on condition that this use tends to
indicate a connection between the said goods and the owner of the registered mark, and the
owner of the registered mark is liable to be injured by the aforesaid use.

Marks ineligible for registration

11. The following marks are not eligible for registration:

(6)

a mark liable to deceive the public, a mark that includes a false indication of origin, and
a mark that encourages unfair competition in the trade;

32

(13) a mark identical to a well-known trademark or similar enough to it to deceive, even

if it is not a registered trademark, in respect of goods for which the trademark is wellknown or in respect of goods of the same description;
(14) a mark identical with or similar to a well-known trademark that is a registered
trademark, and that even in respect of goods that are not of the same description, if the
mark registration of which was requested tends to indicate a connection between the
goods, in respect of which the mark was requested, and the owner of the registered
mark, and if the owner of the registered mark is liable to be injured by the use of the
requested mark.
Exclusive use of well-known trademark
64A.(a) A well-known trademark - even if it is not a registered trademark, shall entitle its owner
to the exclusive use of the mark for goods, in respect of which it is well-known in Israel
or in respect of goods of the same description.
(b) A well-known trademark that is a registered trademark, shall entitle its owner to
exclusive use also in respect of goods that are not of the same description, if use of the
mark by a person who is not its owner is likely to indicate a connection between the said
goods and the owner of the registered mark, and the owner of the registered mark is
liable to be injured in consequence of aforesaid use.
Continuing use of trademark
25A.

Notwithstanding the provisions of this Order, if an application for registration of a

trademark or the registration of a trademark was made in good faith, or if rights to a
trademark were acquired by way of using it in good faith, then its qualification to be
registered in good faith, the validity of the registration and the right to use the trademark
shall not be adversely affected only by the trademark being identical or similar to a
Geographic Appellation or to a well-known trademark, on condition that the application
to register the trademark, the registration or the aforesaid acquisition of rights took place
before:
(1) in respect of a well-known trademark - the day on which the trademark became a
well-known trademark;
(2) in respect of a Geographic Appellation - January 1, 2000, or the day on which the
Geographic Appellation was given protection in the Member State in which the
geographic area denoted by the Geographic Appellation is located.

Action for infringement

57.

(a) The owner of a registered trademark or the owner of a well-known trademark may
bring action for infringement; the Court shall not entertain an action for infringement
in respect of an unregistered trademark; however, in respect of a well-known
trademark it may entertain an action for its infringement, even if it is not registered.

33

(b) Repealed.
Relief
59.

(a) In an action for infringement, the plaintiff shall be entitled to relief by way of an
injunction and to damages, in addition to any other relief which the Court that hears
the case is competent to grant, and he shall also be entitled to the reliefs enumerated in
section 59A.
(b) In respect of infringement of a well-known trademark that is not a registered
trademark, the plaintiff shall only be entitled to remedy by way of an injunction.

The above provisions were included (or amended) in the Trademark Ordinance back in 1999, in
an amendment known as the TRIPS Agreement, as it was intended to bring the Israeli
Trademark law into conformity with the provisions of the TRIPS Agreement 1991, inter alia in
respect of Well-known Trademarks.
Thus, a Well-known Trademark was defined in the Ordinance as outlined above in Section 1
of the Ordinance).
Furthermore, a trademark owners right to exclusive use was extended, with reference to a Wellknown Trademark, to also cover also non-registered Well-known Trademarks, for goods in
respect of which the mark is well-known or goods of the same description (Section 46A(a) of the
Ordinance), as well as registered Well-known Trademarks, for goods that are not of the same
description, if use of the mark by a person who is not its owner is likely to indicate a connection
between the said goods and the owner of the registered mark, and the owner of the registered
mark is liable to be injured in consequence of aforesaid use (Section 46A(b) of the Ordinance).
Accordingly, the definition of an Infringement was also extended as far as Well-known
Trademarks are concerned to include also:
a) unauthorised use of a mark identical or confusingly similar to a non-registered Well-known
Trademark in relation to goods for which the mark is known or goods of the same description;
b) unauthorised use of a mark identical or confusingly similar to a registered Well-known
Trademark in respect of goods that are not of the same description, on condition that this use
tends to indicate a connection between the said goods and the owner of the owner of the
registered mark, and the owner of the registered mark is liable to be injured by the aforesaid use
(Section 1 of the Ordinance); and the right of the owner of a Well-known Trademark, even if not
registered, to bring a court action for infringement was explicitly acknowledged (Sect6ion 57(a)
of the Ordinance). However, the available relief in such an action was limited to an injunction
(Section 59 of the Ordinance)
Similarly, marks which fall under either of said two categories, were included in the Ordinance
among the marks not eligible for registration (Sections 11(13), 11(14) of the Ordinance).
However, the International tendency to extend the trademark protection given to Well-known
marks was in fact already reflected in the Israeli court decisions before the TRIPS
Amendment, based on Section 11(6) of the Trademark Ordinance, which provides that a mark

34

which might encourage unfair competition in the trade is not eligible for registration, as
illustrated by the Bacardi case.
An application for registration of the mark Bakardi (in English and Hebrew) as a trademark in
class 25 was filed by a local clothing manufacturer, accepted and then published in the Trade
Mark Journal. Upon publication, a notice of opposition was filed by Bacardi the owner of the
Well-known trademark registered in the Trademark Register in Israel, in class 33, for alcoholic
beverages. The Trademark Registrar accepted the opposition [Opposition to TM No. 49574],
and the applicant (the local clothing manufacturer) appealed to the Supreme Court. The
Supreme Court affirmed the Registrars decision to accept the opposition and refused the
trademark application [C.A. 6181/96 Kredi vs Bacardi & Co], stating as follows:
It is true that in Section 11 of the Ordinance there is no direct reference to the international
goodwill doctrine or to the doctrine of dilution, but in my opinion it is possible to incorporate
the concepts behind these doctrines into the term unfair competition. Use of the goodwill of a
famous business, the fame of which transcends borders, by a foreign factor for the purpose of
promoting its own business, may be considered unfair competition. Trademarks, that have
acquired international recognition and goodwill so powerful as to go beyond the specific
products in which the trademark owner engages, deserve protection under the law. Use of a
famous trademark is unfair from at least two aspects firstly, the user of the trademark reaps the
fruit of the goodwill for which he has not labored. He enjoys, unjustly, the advantage afforded
by use of a famous trademark. Secondly, exploitation of the goodwill entails possible injury to
the lawful owner of the trademark, due to the devaluation and dilution of the goodwill and
erosion of the exclusivity of the trademark. In light of the aforesaid it is clear that it is sufficient
to prove that use of the famous mark is likely to promote the businesses of the user due to the
goodwill of the owner of the famous mark.

35

JAPAN
Contributor:

Mr. Tomoya Kurokawa

SOEI PATENT & LAW FIRM

Tokyo
Japan
Introduction
Japan affords protection to trademarks that have become sufficiently famous under Articles 4-110, 4-1-15 and 4-1-19 and Article 32 of the Trademark Act, even if the trademark is not
registered. Furthermore, a registered famous trademark may also be able to obtain further
protection using defensive mark registrations under Article 64. In addition, proprietors of
famous trademarks that are not registered have the opportunity to enforce their trademark against
others under the Unfair Competition Prevention Act.
Blocking registration of a third partys mark based on an unregistered famous mark
A trademark which is identical with, or similar to, another person's registered trademark with an
earlier filing date cannot be registered, if such a trademark covers goods or services identical
with or similar to those covered by the registered trademark (Trademark Act, Article 4-1-11.).
In addition to the above, a famous trademark, even if it is not registered, can block another
persons trademark registration under some conditions. That is, the existence of a famous
trademark can block the registration of the following trademarks.
(i) A trademark which is identical with, or similar to, another person's trademark which is
famous among consumers in Japan, as indicating the goods or services of another person,
cannot be registered if such trademark covers goods or services identical with or similar to
those covered by the other person's famous trademark (Trademark Act, Article 4-1-10.)
Whether a trademark has become famous should be evaluated based on, for example, the
mark as it is actually used and goods/services for which the trademark is actually used,
duration and area, volume of sales, volume of advertisements, volume of exposure in
newspapers, magazines or internet websites, results of consumer surveys. Even if a
trademark has not been used in Japan, a trademark can be found to be famous in Japan, if the
trademark has been used abroad and the mark has had substantial exposure in Japan through
media like television, newspapers, magazines or internet websites.
(ii) A trademark which is likely to cause confusion in connection with the goods or services
pertaining to a business of another person cannot be registered (Trademark Act, Article 4-115.) In this case, confusion includes not only confusion of origin of goods/services, but
also confusion as to the business relationship between the two parties.

36

(iii) A trademark which is identical with, or similar to, another persons trademark which is
famous among consumers in Japan or abroad as indicating goods or services pertaining to a
business of the other person cannot be registered if such trademark is used for unfair
purposes (Trademark Act, Article 4-1-19.) In this case, unfair purpose includes, inter alia,
trademark trolling, free riding, dilution, pollution. The criteria for the determination of
whether a trademark has become famous are as same as those explained in the above (i).
Further, a trademark that has become so famous in connection with registered goods and services
that use of the mark by another person on different goods or service would be likely to cause
confusion as to origin of the goods and services may be registered as a defensive mark for such
different goods and services (Trademark Act, Article 64.) Registered defensive marks can
prevent another person from registering a mark identical to the registered defensive mark for
goods or services identical to those designated in the registered defensive mark (Trademark Act,
Article 4-1-12.)
Right to use of famous mark without registration
The owner of a famous mark, even if it is not registered, can continue using the mark in spite of
the existence of another partys conflicting registered trademark. That is, when the owner of an
unregistered mark has been using the mark in good faith prior to the filing of the application for
an identical or similar mark by another party in relation to identical or similar goods or services
and the owners unregistered mark has become famous among consumers as indicating the goods
and services connected with the owners business at the time the other party filed the application,
the owner has the right to use the mark by virtue of prior use (Trademark Act, Article 32). This
right is an exception to the first-to-file rule. If the other party claims the owners use constitutes
infringement of the other partys registered trademark right, the owner can successfully defend
his/her interest by proving his/her right to use the trademark by virtue of prior use.
Enforcement Action based on unregistered famous mark
Although there is no provision in the Trademark Act concerning enforcement based on an
unregistered trademark, the following acts are prohibited under the Unfair Competition
Prevention Act:
(i) Acts of creating confusion with another person's goods or business by using a trademark that
is identical with or similar to the other persons famous trademark, or acts of assigning,
delivering, displaying for the purpose of assignment or delivery, exporting, importing or
providing through an electric telecommunication line the goods bearing such a trademark
(Unfair Competition Prevention Act, Article 2-1); and
(ii) Acts of using a trademark that is identical with or similar to another person's famous
trademark, or the acts of assigning, delivering, displaying for the purpose of assignment or

37

delivery, exporting, importing or providing through an electric telecommunication line the

goods bearing such a trademark (Unfair Competition Prevention Act, Article 2-2);
Here, famous in the Article 2-2 requires higher level of fame than that in the Article 2-1. That
is, in Article 2-2, the trademark should be widely known all over Japan to be found famous.
On the other hand, in the Article 2-1, the trademark can be found to be famous if the trademark
is known in substantial area (i.e. several prefectures) in Japan.
The owner of a famous trademark can seek an injunction against these acts and claim damages
for these acts (Unfair Competition Prevention Act, Article 3 and 4). However, it is generally
more practical for the owner of a famous trademark to obtain registration for the trademark, even
if the trademark is famous because, in unfair competition litigation, the owner must prove that
the trademark has become famous by providing extensive evidence.
Conclusion
As explained above, unregistered famous trademarks can be protected in several ways. Thus, the
owner of an unregistered famous trademark should consider these protections if he/she faces a
prior trademark as an obstacle for registration or use, a trademark troll, a free rider, dilution or
pollution of his/her famous mark.
However, the owner of the mark has the burden of proving to the Japan Patent Office or the
Court that the mark has become a famous. Because this burden is so heavy, a trademark owner
would be well advised to obtain registration for the trademark, even if it is quite probable that the
trademark will be found to be famous, to obtain more effective protection while avoiding the
necessity of shouldering such a burden.

38

MALAYSIA
Contributor:

Mr. Kim Tean Ng

NANYANG LAW-H2 ALLIANCE
Singapore

In Malaysia, statutory rights conferred to proprietors of well-known marks can be found in

Section 70B of the Malaysia Trade Marks Act (hereinafter referred to as the Act). Section 70B
of the Act stipulates that:
(1) The proprietor of a trade mark which is entitled to protection under the Paris
Convention or the TRIPS Agreement as a well-known trade mark is entitled to
restrain by injunction the use in Malaysia in course of trade and without the
proprietors consent of the trade mark which, or the essential part of which, is
identical with or nearly resembles the proprietors mark, in respect of the same
goods or services, where the use is likely to deceive or cause confusion [our
emphasis].
(2) Nothing in subsection (1) shall affect the continuation of any bona fide use of a
trade mark begun before the commencement of this Act.
(3) In this section, references to a trade mark which is entitled to protection under
Article 6bis of the Paris Convention or Article 16 of the TRIPS Agreement as a
well-known trade mark which is well-known in Malaysia as being the mark of a
person whether or not that person carries on business, or has any goodwill, in
Malaysia, and references to the proprietor of such a mark shall be construed
accordingly.
The position taken under Section 70B of the Act in relation to protection of well-known marks in
Malaysia is apparent. In order for a proprietor of a well-known trade mark to confer statutory
protection on its trade mark under Section 70B(1), use of the mark by a third party must be in
relation of identical goods or services.
Similarly, registration of a mark identical or similar to a well-known mark in Malaysia in respect
of identical or similar goods or services shall be refused by virtue of Section 14 of the Act which
provides that:

39

(14) Prohibition on registration.

(1). A mark or part of a mark shall not be registered as a trade mark:

(d) if it is identical with or so nearly resembles a mark which is well-known in Malaysia

for the same goods or services of another proprietor; [Ins. Act A1078]
(e) if it is well-known and registered in Malaysia for goods or services not the same as to
those in respect of which registration is applied for: Provided that the use of the mark in
relation to those goods or services would indicate a connection between those goods or
services and the proprietor of the well-known mark, and the interests of the proprietor of
the well-known mark are likely to be damaged by such use.
However, trade mark practitioners seem to practice vigilance towards applying doctrine of wellknown marks, as there is no actual case law to support Section 70B of the Act.

40

MEXICO
Contributor:

Mr. Fernando Becerril

BECERRIL, COCA & BECERRIL, S.C.
Mexico City
Mexico

The Mexican Industrial Property Law (MIPL) distinguishes between Well-known and Famous
Marks, with Famous Marks enjoying wider protection than that given to Well-known Marks.

1. Concept
According to the MIPL, a mark is considered to be a Well-known Mark in Mexico when a
determined sector of the public or the commercial circles of the country, knows the mark as a
consequence of the commercial activities developed in Mexico or overseas, by a person that uses
such mark in relation to its products or services or as a consequence of the promotion or
publicity of the same.
On the other hand, the MIPL distinguishes a Famous Mark as being one which is known by the
majority of consumers i.e. known by the public in general, which includes any commercial
sector, regardless of the goods or services covered.
This means that according to the Mexican legal framework, the scope of a trademark considered
to be a Famous Mark is broader than the scope of a trademark which is considered to be a Wellknown mark.

2. Declaration
The MIPL establishes a procedure to obtain a declaration of Well-known or Famous Mark.
The holder of a trademark that wishes to obtain this declaration must file a petition requesting the
declaration of Well-known or Famous Mark with the Mexican Institute of Industrial Property
(MIIP). The petition must include specific information/evidence which proves that the mark is
known by a specific sector or by the consuming public (consumers).
Relevant information that must accompany such a petition includes the following:
a) The sector of the public comprising real or potential consumers that identifies the mark with
the products or services that it protects, based on a survey or market study;
b) Other sectors of the public different from the real or potential consumers that identify the
mark with the products or services that it protects, based on a survey or market study;
c) The commercial circles comprising retailers, industrialists or service providers related to the
kind of products or services, that identify the mark with the products or services that it
protects, based on a survey or study market;

41

d) The time of effective advertising of the mark in Mexico, and abroad;

e) The investment made during the last 3 years in publicity or promotion of the mark in Mexico,
and abroad;
f) The geographic area of effective influence of the mark;
g) The volume of sales of the products or the incomes perceived by the provision of services
protected under the mark, during the last 3 years;
h) The economic value that the mark represents, in the countable capital of the holder company
according to its estimation;
i) The certificates of registration of the mark in Mexico, and overseas if any;
j) The percentage of participation of the mark in the corresponding sector or segment of the
market.

3. Disadvantages of the Declaration

One of the most important issues to be considered against the proper functioning of such
provision is that some of the required information and documentation to request the declaration
of Well-known or Famous Mark is in some cases confidential and, in other cases incongruent
with the International Treaties, as well as with the basic principles of well-known trademarks,
since it is required that the Well-known or Famous Mark is used and registered in Mexico.
Moreover, the fact that it is difficult and expensive to obtain evidence to prove each and every
condition stipulated by the law as well as the high official fees applicable for obtaining the
declaration, have been the main factors that the system has not had the success expected. In fact,
since the registration proceedings came into force, only a few companies have applied for written
declarations issued by the MIIP.
In this regard, one of the basic principles of the Well-known marks established in International
Treaties is that the same can achieve the status of Well-known or Famous, even if they are not
used and/or registered in a specific country.
Nevertheless, in order to obtain proper recognition of the Mexican authorities by means of the
declaration, a foreign trademark considered well-known abroad, will have to be used and
registered in Mexico, which seems to be contrary to the meaning and purpose of these kind of
marks.

4. Advantages of the Declaration

Nevertheless, there are more disadvantages in the provisions of the MIPL, as these marks are
regulated. There are a few advantages in obtaining a Well-known or Famous Mark declaration
and it is that the declaration provides the owner of the mark the possibility of obtaining from the
MIIP the refusal to register any identical or confusingly similar trademark application to the
Well-known or Famous Mark, even when the products or services that the trademark application
intends to apply for differ from those protected by the Well-known or Famous Mark.

42

Another advantage of securing a formal declaration of a Well-known or Famous Mark is that the
trademark owner may subsequently invoke it in further infringement or cancellation actions,
thus, saving time and expense in producing the pertinent evidence in the course of each and
every proceeding.

5. An alternative procedure to obtain an estimation of Well-known or Famous mark.

Another way to obtain the recognition of Well-known or Famous trademarks, is by means of an
estimation (but not a formal written declaration) obtained through a decision issued by the MIIP
within a litigation proceeding initiated against a trademark granted and owned by a third party, in
which the legal basis of the litigation is that the challenged trademark registration was illegally
granted, due to it being similar to a Well-known or Famous trademark.
The plaintiff must prove that the trademark is Well-known or Famous (theoretically, just with the
evidence he considers necessary, but not necessarily offering all the information and
documentation stated by law to obtain a declaration). If the MIIP recognizes the trademark as
being Well-known or Famous, it will then decide to nullify the challenged mark.

43

NEW ZEALAND
Contributor:

Dr. Elizabeth E. Houlihan

Houlihan2
Queenstown
New Zealand

New Zealand abolished defensive trade marks under a revision of the Trade Marks Act in 2002
and imposed new measures to protect famous marks. Such provisions initially provided
protection only for well-known marks within New Zealand for the same goods and/or services,
provided use of conflicting marks would be likely to deceive or cause confusion. However, New
Zealand has now implemented new provisions in relation to both infringement and Trade Mark
Applications. Under section 25(1)(c), the requirement that the goods or services be related and
the limitation of likely to deceive or cause confusion have been removed altogether, whereas
under section 89(1)(d), the infringement provisions appear to have adopted the United Kingdom
wording, making the two sections considerably different.

Section 25(1)(c)
New Zealand provides the opportunity for Trade Mark Examiners themselves to raise a wellknown mark as a citation against a pending Trade Mark Application, meaning that the onus is
not solely on owners of famous marks to identify and make relevant objections against
conflicting registrations. However, the New Zealand Intellectual Offices Practice Guidelines do
acknowledge that because of the need for an Examiner to provide reasons to support such an
objection, rejections under the 25(1)(c) provision are uncommon and it will be left to the owner
of the well-known mark to prove reputation.
To qualify as a citation against an application, the well-known mark need not itself be registered,
provided it has established distinctiveness through use in the marketplace. According to Section
25(1)(c), the limitation also applies in respect of unrelated goods or services, provided it
indicates a connection in the course of trade between the goods or services in the specification
and the owner of the well-known trade mark, and is likely to prejudice the interests of the owner
of the well-known trade mark. This gives rise to numerous questions, namely what is wellknown; what constitutes indicating a connection in the course of trade and what does the
statute mean by likely to prejudice the interests of the owner?

What Constitutes Well-known?

Again, New Zealand legislation has not defined well-known with any precision; however, it
seems that in New Zealand, sufficient public awareness of a mark can be established if the mark
is well-known by a substantial number of persons in the relevant sector. It has, however, been
found that evidence of advertising, marketing and sponsorship asserting substantial awareness of

44

a mark can still fall below the standard required to constitute what is well-known (Zespri
Group Case).
This was found to be the case in SANY Group Co Ltd T27/2008, 29 September 2008, which
held that despite substantial awareness of the Mercedes-Benz three pointed star in a ring device,
the evidence fell short of supporting a finding that those marks were well-known. It has also
been suggested that well-known requires something more than reputation, but less than what
would be required to be famous.

What Constitutes Indicating a Connection in the Course of Trade?

The test is whether or not consumers may consider the later mark to be an extension or variation
of the well-known mark. Courts have been prepared to find that dissimilation [of the goods] is a
strong indication against there being a trade connection, such that TICK TOCK, whilst suitably
similar to TIC TAC, did not indicate a connection in the course of trade because tea, for the
former, and mints, for the latter, were products deemed by the Court to be too dissimilar
(Wistbray Limited v Ferrero S.p.A (CIV 2007-485-460, 11 December 2008).

What is meant by likely to prejudice the interests of the owner

Whilst obiter, the Court has held that more is required than simply an assertion by the owner of
the famous mark of resulting prejudice. However, whether such comment demands expert
evidence is still unclear. The Court has been prepared to accept that a connection in the course of
trade would result in free-riding on the coattails of the opponents well-known mark, or an
attempt to trade on its reputation; blur the distinctiveness of the opponents well-known mark,
undermining its capability of arousing immediate association with the goods for which it is
registered; and deny real and valuable licensing and brand-extension opportunities if the
opponents mark were registered.
The dissimilarity of the goods is also relevant in an assessment of whether it is likely to prejudice
the interests of the owner, where in the Wistbray case above, the Court was also inclined to find
no real prospect of harm as a result of the distinct differences between the goods.

Section 89(1)(d)
The wording of this section provides that a person infringes a registered mark if he, without
right, uses a mark that is identical or similar to the well-known registered mark, regardless of the
goods or services in relation to which it is used, provided that the use of the sign takes unfair
advantage of, or is detrimental to, the distinctive character or repute of the mark.
This provision is yet to be considered by the New Zealand Courts, but such provision appears to
apply to use, which will not only result in deception or confusion on the part of consumers, but
will also extend to dilutive actions in a similar way as the provision does in the United Kingdom.

45

Conclusion
New Zealand does provide protection of famous marks, even in relation to non-related goods or
services. New Zealand also appears to have included an anti-dilution provision in line with both
the position adopted in Europe and the United States.

46

PAKISTAN
Contributor:

M. Yawar Irfan Khan

UNITED TRADEMARK & PATENT SERVICES
Lahore
Pakistan

Prior to 2001, Famous Marks were protected by the courts under the tort of Passing Off. In 2001,
the Trade Marks Ordinance was passed, but was enforced from April, 2004. The Ordinance of
2001 provided for statutory recognition of well-known marks. Thus, a well-known mark is now
also protected in Pakistan by law, whether or not the mark has any domestic use or goodwill and
remedies by way of injunction have been provided. Relevant provisions are Sections 85 and 86
of Trade Marks Ordinance of 2001. In addition, based on the well-known character of the mark,
a trademark application can also be opposed and refused by the Registrar.

Section 85. Meaning of Paris Convention and Convention country

In this Ordinance:
(a) Paris Convention means the Paris Convention for the Protection of Industrial Property of
the 20 March 1883, as revised or amended from time to time; and
(b) a Convention country means a country other than Pakistan, which is a party to the Paris
Convention.
Section 86. Protection of a well-known trade mark
(1)

References in this Ordinance to a trade mark which is entitled to protection as a wellknown trade mark shall be to a mark which is so entitled under the Paris Convention and
which is well-known in Pakistan as being the mark of a person who:
(a) is a national of a Convention country; or
(b) is domiciled in, or has a real and effective industrial or commercial establishment in, a
C Convention country,
whether or not that person carries on business, or has any goodwill, in Pakistan and
references to the proprietor of such a mark shall be construed accordingly.

(2)

For the purposes of this Ordinance, the tribunal while determining whether a trade mark is
well-known, without having to require registration or actual use in the form of sales of
goods or services under the trade mark in Pakistan, shall consider the following factors as
relevant criteria for establishing the well-known status of the trade mark, namely:-

47

(i)

the amount of Pakistan or worldwide recognition of the trade mark;

(ii)

the degree of inherent or acquired distinctiveness of the trade mark;

(iii) the Pakistan or worldwide duration of the use and advertising of the trade mark;
(iv) the Pakistan or worldwide commercial value attributed to the trade mark;
(v) the Pakistani or worldwide geographical scope of the use and advertising of the t
r
trade mark;
(vi) the Pakistan or worldwide quality and image that the trade mark has acquired; and
(vii) the Pakistan or worldwide exclusivity of use and registration attained by the trade
mark and the presence or absence of identical or deceptively similar third party trade
marks validly registered or used in relation to identical or similar goods and services.
(3)

(4)

The owner of a trade mark which is entitled to protection under the Paris Convention as a
well-known trade mark shall be entitled to restrain by injunction, the use in Pakistan of a
trade mark which, or the essential part of which, is identical or deceptively similar in the
well-known trade mark:
(a)

in relation to identical or similar goods or services, where the use is likely to cause
confusion; or

(b)

where such use causes dilution of the distinctive quality of the well-known trade
mark.

Rights conferred under sub-section (3) shall be subject to the provisions of Section 81
(relating to acquiescence) and nothing in the said sub-section shall affect the continuation
of any bona fide use of a trade mark begun before the commencement of the Ordinance.

Relevant Case Law

At the outset, Pakistani courts have provided protection to Famous Marks and in particular, in
those cases where foreign (well-known) marks have been dishonestly adopted in Pakistan. There
have been some relevant cases, brief extracts from which appear below.
On the issue of well-known marks and the internationalization of trade in Pakistan, Mr. Justice
Wajihuddin Ahmed, in 1992 MLD 2506 Karachi at page 2513 observed and stated:
an enactment on Trade Marks is essentially an international statute,
catering to national and international sensibilities.We are living in an
information age where the Earth has veritably become a global village.

In another case, PLD 1979 Karachi 83 at page 87, Mr. Justice I. Mahmud stated that:

48

With the revival of International Trade and international publicity, the

rights of owners of foreign Trade Marks ought to receive some safeguard
unless it is clear from the evidence that the foreign owners have abandoned
their intention of marketing their products under the mark in this country.
In PLD 1987 Kar. 356 at page 363, Mr. Justice Syed Abdur Rehman commented as under:
In a recent conference on Trade marks and Patents-Intellectual Property
as it was termed held at Islamabad the necessity of safe-guard to the rights
of owners of foreign trademarks and patents was universally accepted. Mr.
Justice Muhammad Haleem Chief Justice of Pakistan in his presidential
address reported in PLD 1986 Jour.353 has dealt with the subject in a
beautiful manner and has urged the need for protecting such rights and at
the same time he has taken due note of the interests of the developing
countries.
In PLJ 1991 SC 57 at Page 62 (TOSHIBA CASE), it is stated that:
The respondent has shown no reason tenable at law to pick up an invented
word of foreign firm enjoying inside the country and outside a reputation
for electrical goods of various descriptions.it is against public interest to
register such a trademark.
In PLD 1990 SC 1074, the Supreme Court approved the following observation of the High
Court:
With the proliferation of means of communication media the names and
products of word renowned big companies are catching the eyes and ears
of the public at large in all civilized countries of the world and Pakistan is
no exception. Extensive traveling abroad in the recent past has made it
possible for the people of Pakistan to have knowledge of the internationally
renowned companies and their products. Respondent 2 is no doubt a
company of world renown and its products are marketed in Pakistan as
also in other countries.

49

THE PHILIPPINES
Contributor:

Ms. Editha Hechanova

HECHANOVA & CO., INC.
Makati City
Philippines

I.

Republic Act No. 8293 (Intellectual Property Code) which took effect on 1 January
1998

A. General Provisions:
Section 3 in relation to Section 231 - International Conventions and Reciprocity; Reverse
Reciprocity of Foreign Laws.

Any person who is a national or who is domiciled or has a real and effective industrial
establishment in a country which is a party to any convention, treaty or agreement relating to
intellectual property rights or the repression of unfair competition, to which the Philippines is
also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled
to benefits to the extent necessary to give effect to any provision of such convention, treaty or
reciprocal law, in addition to the rights to which any owner of an intellectual property right is
otherwise entitled by this Act.
Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden
imposed by the law of a foreign country on a Philippine national seeking protection of
intellectual property rights in that country, shall reciprocally be enforceable upon nationals of
said country, within Philippine jurisdiction.
B.

Trademark Provisions

Section 123 - Registrability

123.1. A mark cannot be registered if it:

..
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well-known internationally
and in the Philippines, whether or not it is registered here, as being already the mark of a
person other than the applicant for registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark is well-known, account shall be
taken of the knowledge of the relevant sector of the public, rather than of the public at large,
including knowledge in the Philippines which has been obtained as a result of the promotion
of the mark;

50

Section 124 - Requirements of Application

124.1. The application for the registration of the mark shall be in Filipino or in English and shall
contain the following:
..
(c) The name of a State of which the applicant is a national or where he has domicile; and the
name of a State in which the applicant has a real and effective industrial or commercial
establishment, if any;
..
(e) The appointment of an agent or representative, if the applicant is not domiciled in the
Philippines;
(f) Where the applicant claims the priority of an earlier application, an indication of:
(i) The name of the State with whose national office the earlier application was filed or it
filed with an office other than a national office, the name of that office,
Section 131 - Priority Right

131.1.

An application for registration of a mark filed in the Philippines by a person referred to

in Section 3, and who previously duly filed an application for registration of the same
mark in one of those countries, shall be considered as filed as of the day the application
was first filed in the foreign country.

131.2.

No registration of a mark in the Philippines by a person described in this section shall be

granted until such mark has been registered in the country of origin of the applicant.

131.3.

Nothing in this section shall entitle the owner of a registration granted under this section
to sue for acts committed prior to the date on which his mark was registered in this
country: Provided, That, notwithstanding the foregoing, the owner of a well-known
mark as defined in Section 123.1(e) of this Act, that is not registered in the Philippines,
may, against an identical or confusingly similar mark, oppose its registration, or petition
the cancellation of its registration or sue for unfair competition, without prejudice to
availing himself of other remedies provided for under the law.

Section 160 - Right of Foreign Corporation to Sue in Trademark or Service Mark

Enforcement Action

Any foreign national or juridical person who meets the requirements of Section 3 of this Act
and does not engage in business in the Philippines may bring a civil or administrative action
hereunder for opposition, cancellation, infringement, unfair competition, or false designation of
origin and false description, whether or not it is licensed to do business in the Philippines under
existing laws.
Section 168 - Unfair Competition, Rights, Regulation and Remedies

A person who has identified in the mind of the public the goods he manufactures or deals in, his
business or services from those of others, whether or not a registered mark is employed, has a

51

property right in the goodwill of the said goods, business or services so identified, which will be
protected in the same manner as other property rights.

II.

Implementing Rules and Regulations for Trademarks:

Rule 101 - Registrability. A mark cannot be registered if it:

..
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well-known internationally
and in the Philippines, whether or not it is registered here, as being already the mark of a
person other than the applicant for registration, and used for identical or similar goods or
services; Provided, That in determining whether a mark is well-known, account shall be
taken of the knowledge of the relevant sector of the public, rather than of the public at
large, including knowledge in the Philippines which has been obtained as a result of the
promotion of the mark.
Rule 102 - Criteria for determining whether a mark is well-known. In determining whether a
mark is well-known, the following criteria or any combination thereof may be taken
into account:

(a) the duration, extent and geographical area of any use of the mark, in particular, the duration,
extent and geographical area of any promotion of the mark, including advertising or
publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which
the mark applies;
(b) the market share, in the Philippines and in other countries, of the goods and/or services to
which the mark applies;
(c) the degree of the inherent or acquired distinction of the mark;
(d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the world;
(f) the exclusivity of registration attained by the mark in the world;
(g) the extent to which the mark has been used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the mark;
(k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark;
and,

52

(l) the presence or absence of identical or similar marks validly registered for or used on
identical or similar goods or services and owned by persons other than the person claiming
that his mark is a well-known mark.

III. Villafuerte Memorandum dated 20 November 1980 (Villafuerte was former Minister
of Trade).
Under the old Trademark law, which is Republic Act No. 166, the then Minister of Trade, Luis
Villafuerte issued a Memorandum to the Director of then Philippine Patent Office (now the
Intellectual Property Office), to reject all pending applications for registration of signature or
other world-famous trademarks other than by the original owners or user, and listed the
following marks as being well-known:
(a)
(b)
(c)
(d)
(e)
(f)
(g)
(h)
(i)
(j)
(k)
(l)
(m)
(n)
(o)

LACOSTE
JORDACHE
VANDERBILT
SASSOON
FILA
PIERRE CARDIN
GUCCI
CHRISTIAN DIOR
OSCAR DE LA RENTA
CALVIN KLEIN
GIVENCHY
RALPH LAUREN
GEOFFREY BEENE
LANVIN
TED LAPIDOUS

This Memorandum has not been repealed.

IV.

Ongpin Memorandum dated 25 October 1983.

Ongpin was a former Minister of Trade. The Ongpin Memorandum laid down the following
criteria or combination thereof, in determining whether a mark is well-known:
(a)
(b)
(c)
(d)
(e)

Declaration by the Trade and Industry Minister that the trademark is well-known;
International use of the trademark;
Registration of the trademark in other countries;
Possession of substantial goodwill and international consumer recognition;
Trademark actually belongs to a party claiming ownership and has right to registration
thereof under the Paris Convention.

This Memorandum has not been repealed.

53

V.

OTHER SOURCES:

A. Supreme Court Decisions (some examples):

1. Mirpuri vs. CA, et al, G.R. No. 114508, Nov. 19, 1999
In this case, the Supreme Court citing the Villafuerte Memorandum and the Ongpin
Memorandum, and the broad powers of the Minister of Trade under Executive Order No. 913,
affirmed the declaration of the mark BARBIZON as well-known.
2. Sehwani, Incorporated v. In-N-Out Burger Inc., G.R. No. 171053, Oct. 15, 2007
The Court further affirmed the Decision dated 22 December 2003 of the IPO Director of Legal
Affairs holding that herein petitioner had the legal capacity to sue for the protection of its
trademarks, even though it was not doing business in the Philippines, and ordering the
cancellation of the registration obtained by herein respondent Sehwani, Incorporated of the
internationally well-known marks of petitioner, and directing respondents to stop using the said
marks. The IPO declared the mark IN-N-OUT BURGER, as well-known.

VI.

CURRENT INITIATIVES OF THE INTELLECTUAL PROPERTY

OFFICE

Heeding the suggestions of the IP practitioners, the IPO has informally stated that it is working
on and including in its program the setting up of a well-known mark registry.

54

ROMANIA
Contributor:

Ms. Doina Tuluca (Partner) and Delia Belciu (Senior Associate)

NESTOR NESTOR DICULESCU KINGSTON PETERSEN
Bucharest
Romania

Romanian law no. 84/1998, regarding trademarks and geographical indications, as republished,
(Law 84/1998 or the Trademarks Law), contain provisions regarding both notorious
trademarks and those that have a reputation in Romania or in the European Union.
The concept of notorious trademark is expressly defined by the Trademark law as opposed to
the concept of reputed trademarks, as a mark largely known in Romania in the sector of the
public targeted by the products or services for which the mark is applied, without being
necessary for the mark to have been registered or used in Romania in order to be opposed.
The opposed trademark has to be notorious on the filing or priority date of a trademark
application.
The Trademark Law provides among the relative grounds for refusal at registration of a
trademark application or of cancellation of a registered trademark, the marks that (i) are
identical with a notorious trademark and are to be registered or have been registered for
products and services which are identical with those for which the notorious trademark is
protected or (ii) the marks that due to their identity or similarity with a notorious trademark
and the identity or similarity of the products and services for which such are to be registered
or have been registered there is a likelihood of confusion on the part of the public, including
the likelihood of association with the notorious trademark. Moreover, the titleholder of a
notorious trademark may request to the competent court to forbid a third party from using,
without his consent, a sign which due to its identity or similarity with the notorious trademark
and the identity or similarity of the products or services there is a likelihood of confusion on the
part of the public, including the likelihood of association between the sign and the trademark.
With respect to the trademark that has a reputation in Romania or in the European Union, the
Trademark Law provides among the relative grounds for which a trademark application is
refused at registration or cancelled, if registered, the marks that are identical or similar to an
earlier Community trademark or national trademark and are to be registered or have been
registered for products and services that are not similar with those for which the earlier
Community or national trademark is registered, when the earlier Community or national
trademark has a reputation in the European Union or Romania and if by the use of the
subsequent trademark it would take unfair advantage of the distinctive character or of the
reputation of the earlier Community or national trademark. Moreover, the titleholder of a
trademark that has a reputation in Romania or in the European Union may request to the
competent court to forbid a third party from using, without his consent, a sign identical or similar
to its trademark for products or services different from those for which the trademark is
registered if by such use it would be taken unfair advantage of the distinctive character or of the
reputation of the earlier Community or national trademark.

55

The trademarks that have a reputation in Romania or in the European Union are registered
trademarks as opposed to notorious trademarks that do not have to be necessarily registered.
Nevertheless, no specific criteria are provided by the law in order to establish if a trademark has
a reputation in Romania or the European Union. SOITs examiners and the competent courts
establish at their sole appreciation, on a case by case basis, depending on the provided evidence
and the factual situation, if a trademark has a reputation in Romania or in the European Union.
The Romanian doctrine sustains that the trademarks that have a reputation are those that have
become known to a significant part of the targeted public, fact that might be proven by any
means of evidence. In addition, it has to be also proven the manner in which it would be taken
unfair advantage of their distinctive character or of their reputation by the registration of a
subsequent trademark.
In what concerns the notorious character of a trademark, the Trademark Law provides the
following criteria in order to determine such:
(i) distinctive character, initial or acquired, in Romania;
(ii) duration and the extent of use in Romania of the notorious trademark in relation to products
and services for which the mark is requested at registration;
(iii) duration and extent of the advertising of the notorious trademark in Romania;
(iv) geographical area of use of the notorious trademark in Romania;
(v) degree of awareness of the notorious trademark on the Romanian market by the sector of the
public to which such is addressed;
(vi) existence of identical or similar trademarks for identical or similar products belonging to
other person than the one that claims that its trademark is notorious.
When examining the relative grounds on the basis of the criteria mentioned herein above,
Romanian State Office for Inventions and Trademarks (SOIT) may request to public
authorities, institutions, as well as to the private law legal persons documents in order to
establish the notorious character of a trademark in Romania.
The Regulation for the implementation of the Trademark law, as approved by Government
Decision no. 1134/2010, (the Implementation Regulation), provides that in order to establish if
a trademark is notorious it is sufficient for such to be largely known on the Romanian territory
and to the sector of public in Romania to which such is addressed.
The sector of public is to be established, according to the Implementation Regulation, on the
basis of the following elements:
(i) category of consumers targeted for the products or services to which the trademark refers to;
the identification of the category of consumers is made on groups of consumers of certain
products or services in relation to which the trademark is used;
(ii) distribution networks of the products or services to which the trademark refers to.
Neither the Trademark Law or the Implementation Regulation establish a certain percentage of
the targeted sector of public in order to determine the largely known character of a notorious
trademarks, leaving thus at the sole appreciation of SOITs examiners and of the competent
courts the task of determining, on a case by case basis, if a trademark is notorious or not.

56

The degree of awareness of a trademark by the public may be appreciated, according to the
Implementation Regulation, by taking into account its promotion, including advertising and
promotion of the products or services to which the trademark is applied at fairs or exhibitions. In
a case, a Romanian court has appreciated that even if a certain volume of sales and stocks has
been proved, as well as the fact that the trademark in question has been promoted at fairs and
exhibitions, obtaining several distinctions, all these evidences having thus the nature of proving
that that trademark is known to the targeted segment of public, the lack of any proof as to the
percentage of public that knows this trademark has been considered as not proving the largely
known character of the trademark and therefore its notorious character has not been proved
beyond any doubt.
The notorious character of a trademark may be proven by any means of evidence, as such is not
retained ex officio by SOIT or by a competent court.
In order to sustain the notorious character of a trademark on the Romanian territory it might be
presented documents as those regarding:
(i) the commercialization or the placing for sale of products or the supply of services under the
notorious trademark;
(ii) import or export of the products on which the notorious trademark is applied;
(iii) advertising of the products and services under which the notorious trademark is known in
Romania.
Although notorious trademarks have a legal defined framework and to a certain extent also the
trademarks that have a reputation in Romanian or in the European Union, the lack of express and
determined criteria lead to a subjective interpretation and to a case law that is sometimes not
uniform.

57

SINGAPORE
Contributor:

Mr. Kim Tean Ng

Nanyang Law-H2 Alliance

Singapore

It is trite law that the trinity of classic elements of (1) goodwill, (2) misrepresentation and (3)
damages must be present in order to succeed in an action of tort of passing off. Traditionally, the
Singapore Courts adopt a hard-line approach which emphasizes the divisible nature of goodwill
and Intellectual Property Rights. If a trader conducts a business in several countries, a separate
goodwill is attached to the traders business in each jurisdiction, and it follows that if a foreign
trader does not have a business presence in the Singapore market, there will be virtually no
goodwill and therefore, there will be no remedy under the law of passing off.
In year 2004, the 1998 Singapore Trade Marks Act was amended to invoke statutory remedy for
the proprietor of well-known marks to restrain by injunction the use in Singapore, in the
course of trade and without the proprietors consent, of any trade mark which, or an essential
part of which, is identical with or similar to the proprietors trade mark, in relation to identical
or similar goods or services, where the use is likely to cause confusion.
Section 55(1) of the Trade Marks Act stipulates that:
A well-known trade mark shall be entitled to protection under this section:
(a) whether or not the trade mark has been registered in Singapore, or an
application for the registration of the trade mark has been made to the
Registrar; and
(b) whether or not the proprietor of the trade mark carries on business, or has
any goodwill, in Singapore. [our emphasis]

The wording of Section 55 of the Trade Marks Act suggests provision of statutory rights for a
proprietor of well-known marks to restrain unauthorised use of an identical or similar mark by
other traders, whether or not the proprietor of the well-known mark has goodwill in Singapore.
The doctrine of well-known marks and relevant statutory provisions were discussed in detail by
the Singapore courts in the recent High Court decision of Amanresorts Ltd and another v Novelty
Pte Ltd and more extensively in the Court of Appeal decision Novelty Pte Ltd v Amanresorts Ltd
and another (hereinafter collectively referred to as the Amanusa Case)
In this case, the Defendant was a real estate developer while the Plaintiff was an umbrella of
management owning a chain of ultra-luxurious AMAN resorts and spas worldwide. The
Defendant had named its latest real estate development as AMANUSA, identical to one of the
Plaintiffs chain of resorts located in Bali. The Plaintiff did not have a trade mark registration of
the mark AMANUSA in Singapore and thus brought an action of passing off against the

58

Defendant, and sought protection of their mark under Section 55 of the Trade Marks Act. The
Plaintiff only relied on Section 55(3)(a) of the Trade Marks Act. For purposes of this paper, we
set forth below Section 55(3) of the Trade Marks Act as follows:
Subject to subsections (6) and (7), the proprietor of a well-known trade mark shall
be entitled to restrain by injunction the use in Singapore, in the course of trade and
without the proprietors consent, of any trade mark which, or an essential part of
which, is identical with or similar to the proprietors trade mark, in relation to any
goods or services, where the use of the trade mark
(a) would indicate a connection between those goods or services and the
proprietor, and is likely to damage the interests of the proprietor; or
(b) if the proprietors trade mark is well-known to the public at large in Singapore
(i) would cause dilution in an unfair manner of the distinctive character of the
proprietors trade mark; or
(ii) would take unfair advantage of the distinctive character of the proprietors
trade mark. [our emphasis]

The Judge not only found that the Plaintiffs claim in the tort of passing off was made out, but
also held that AMANUSA is a well-known mark in Singapore, within the interpretation of
Section 2(7), 2(8) and 2(9) of the Trade Marks Act. Despite the Defendants arguments that the
relevant sector of the public in Singapore in Section 2(8) of the Trade Marks Act refers to the
actual and/or potential consumers of the defendants, the Judge found that the trade mark in
question, refers to the plaintiffs trade mark and therefore, the goods or services in question shall
be the plaintiffs. The degree of recognition of the alleged well-known mark by the relevant
sector shall be taken into consideration, when determining whether a mark is considered wellknown. Holding that the Plaintiffs mark is a well-known trade mark, the Judge granted a
declaration that the Plaintiffs mark is a well-known trade mark in Singapore and an injunction
against the Defendant and anyone acting on its behalf from using the Plaintiffs well-known
trade mark.
Qualifiers as a well-known trade mark in Singapore to be bestowed protection under Section
55 of the Trade Marks Act was discussed more extensively in the Singapore Court of Appeal
(hereinafter referred to as the SGCA) decision of the Amanusa Case, but the findings of SGCA
were the same as the trial Judge.
The endorsement of Section 55 as statutory rights for protection of well-known marks in
Singapore was reinforced again in the decision of Louis Vuitton Malletier v City Chain Stores
(S) Pte Ltd and another matter and in relation to an action against the Defendants use of a
flower device (the Solvil Flower), which is identical or similar to the Plaintiffs flower devices,
the Flower Quaterfoil and the Flower Quaterfoil Diamond (collectively referred to as the
Plaintiffs Trade Marks) on their watches under Section 27 and Section 55(3) of the Trade
Marks Act for trade mark infringement and protection of well-known marks, respectively. The
Judge in considering Section 55(3)(b) of the Trade Marks Act on whether the mark is wellknown at large in Singapore, held that:

59

In my view, the individual elements, namely the (Plaintiffs) Trade Marks here, are distinctive
in their own right. They are conspicuous in design and each element is clearly and repeatedly set
out in the whole. I see little room for doubt that they would be as easily recognisable as the
Monogram by the public at large here. I find the Trade Marks do qualify as well-known trade
marks under the Act.
Since the Plaintiffs flower devices were found to be well-known, the Plaintiff succeeded in its
claims for dilution of well-known mark under Section 55(3)(b). Interestingly, the Judge did not
discuss the test to be applied to render the Monogram well-known to the public at large in
Singapore in detail.
When the Defendant appealed the trial Judges decision, the SCGA held that in order to fall
within the ambit of well-known to the public at large in Singapore, the mark must necessarily
enjoy a much higher degree of recognition and must be recognised by most sectors of the public.
The SCGA was unable to agree with the trial Judges decision that by virtue of the fact that
because the mark is distinctive on its own, it is considered well-known. The SCGA reversed the
trial Judges decision that the Plaintiffs mark is well-known to the public at large under Section
55(3)(b).
Grounds of refusal for acceptance of marks identical or similar to a well-known trade mark can
also be found in Section 8(3) and 8(4) of the Trade Marks Act (See also Mobil Petroleum Co,
Ltd v Hyundai Mobis [2009] SCGA 38 in relation to opposition under Section 8(3)) .
The landmark decision of the Amanusa case clearly defines the endorsement of protection of
well-known marks in Singapore and somewhat erodes the concept of territorial nature of
Intellectual Property Rights taken in the traditional hard-line approach. Nevertheless, the
decisions by the Courts certainly inject a balancing act as to whether a trade mark ought to be
considered well-known, based on the merits of each case.

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SOUTH AFRICA
Contributor:

Mr. Alan Smith

ADAMS & ADAMS

Johannesburg
South Africa

South Africa is a member of the Paris Convention for the Protection of Industrial Property. South
Africas obligations are effective from 31 August 1991.

What is protected?
In terms of Section 35(1) of the Trade Marks Act, the proprietor of a trade mark that is entitled to
protection under the Paris Convention as a well-known trade mark is entitled to restrain the use
in the Republic of a trade mark that constitutes, or the essential part of which constitutes, a
reproduction, imitation or translation of the well-known trade mark in relation to goods or
services which are identical or similar to the goods or services in respect of which the mark is
well-known.
The scope for the enforcement is narrower than that in respect of a registered trade mark. The
proprietor of a well-known trade mark must prove that the infringing mark is a reproduction,
imitation or translation of the well-known mark, whereas the proprietor of a registered trade
mark may prevent the unauthorised use of marks that are confusingly similar to the registered
trade mark.
Criteria to qualify
A claimant may enforce its Convention rights in South Africa if its meets the requirements of
Sections 35(1)-(4) of the Trade Marks Act 194 of 1993. Based on the principle of reciprocity
that is central to the Paris Treaty, Section 35(1) of the Trade Marks Act indicates that persons
who are entitled to claim convention rights are those persons who are nationals of convention
countries or those who are domiciled, or have a real and effective industrial or commercial
establishment, in a convention country.
Persons who qualify for protection in terms of Section 35(1) need not carry on business in or
otherwise have any goodwill based on trade in South Africa, provided that the mark in question
qualifies as a well-known trade mark for the purposes of the Trade Marks Act.
The legal criteria for well-known
Section 1 1(A) of the Trade Marks Act indicates that, in determining whether or not a mark is
well-known in South Africa, due regard shall be given to the knowledge of the trade mark in the
relevant sector of the public.

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Section 1 1(A) is an amendment to the Trade Marks Act that followed the only significant
decision of the Supreme Court of Appeal that dealt with the meaning and definition of a wellknown trade mark, McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd. and
Another; McDonald's Corporation v Dax Prop CC and Another; McDonald's Corporation v
Joburgers Drive-Inn Restaurant (Pty) Ltd. and Another 1997 (1) SA 1 (SCA). The amendment
brings the Trade Marks Act in line with the findings of the Supreme Court of Appeal.
In the McDonalds case, the Supreme Court of Appeal considered carefully that South Africa is
an extremely diverse country with large differences in wealth, education and consumer
knowledge. The Court a quo had struggled to admit the survey data submitted by McDonalds
due to those disparities.
In deciding whether or not the trade mark MCDONALDS was well-known in South Africa, the
Supreme Court of Appeal indicated that the test to determine if a foreign mark is well-known in
South Africa is whether or not a substantial, that is not negligible, number of persons who
are interested in the goods or services of the proprietor are aware of the mark. As the mark
MCDONALDS is used globally in relation to services, the Court determined that persons in the
food franchising industry constituted the relevant sector of the public. McDonalds was
successful in proving that a significant number of those persons was aware of the mark
MCDONALDS, which was held to be well-known in the services industry in South Africa.
Exemption from non-use
Trade mark registrations may be removed from the Register if there has not been relevant use for
5 years. In terms of Section 27(5) of the Trade Marks Act, a mark that is well-known in terms of
section 35(1) may not be removed from the Register of Trade Marks after the expiry of the 5
year non-use period. However, proprietors of well-known trade marks must be aware that the
exemption only applies to goods or services in respect of which the mark is well-known. It is
therefore possible that, after the 5 year non-use period expires, registrations for well-known
marks that are registered broadly in respect of all the goods or services under a class heading
may be partially cancelled so that the registrations are restricted to the specific goods or services
in relation to which the proprietor can show that its mark is well-known.

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SPAIN
Contributor:

Ms. Elia Sugraes

SUGRAES
Barcelona
Spain

Well-known trademarks have been regulated by the Directive (First Counsel Directive 89/104
EEC of 21st December 1988 to approximate the laws of the member states relating to
Trademarks) providing that any member may stipulate the protection of a well-known national
trademarks under the same conditions. The provision also foresees the concept and definition of
a well-known trademark and the cases in which it is stated that a trademark infringement exists.
The referred provision was harmonized in the national Trademark Act 17/2001 of 7 December
2001. Following the Trademark Law Revision of 2001, well-known trademarks in Spain have
been more clearly defined and granted broader protection in the concept of being well-known
and reputed trademarks.
Under the Spanish legal system, well-known trademarks are defined as being those that are
broadly known to the pertinent sector of the public for the goods, services or activities covered
by the trademark, as a result of the volume of sales, the extent of duration, the geographic scope
of use, the value of prestige attained in the marketplace or for any other reason. Also, provided
the requirements stipulated above are duly satisfied, the greater the degree of knowledge of the
trademark in the pertinent sector of the public or in other related sectors, the more dissimilar in
nature may be the goods, services, or activities to which protection will extend. The provision
ends by stating that when trademarks are familiar to the public in general, they shall be deemed
to be well-known, and the scope of protection shall extend to all goods, services or activities.
There are two basic concepts to conclude from the definition stated at the Act: that it is precisely
a higher than normal degree of knowledge that causes a sign to be deemed to be well-known or
reputed, stating consequences to block registrations later filed and to the scope of the ius
prohibendi, as well as the differences between well-known and reputed trademarks.
Thus, the Spanish terms notoria translated as well-known and renombrada translated as
reputed can be deemed equivalent to the English terms well-known trademark and famous
trademarks, and that is how these terms will be used in the two languages in this Report,
although there are some specific references to the reputed trademarks in laying down the
scope of ius prohibendi, or when laying down conditions relating to situations in which damages
arise, and as a cause of compensation for damage suffered, or for refusing registration for
confusingly similar names of legal persons.
One of the basic conclusions when summarizing the status of well-known trademarks in Spain is
that in keeping the principle of requiring trademark rights to be acquired through registration, the
Trademark Act has laid down mechanisms for enhanced protection where a sign is not only wellknown, but has also been registered, given that registration always removes ambiguity attaching
to rights and offers legal certainty for third parties, via their access to the entries made in the
corresponding Trade Marks Register. Another relevant aspect, is that protection of well-known
and reputed marks in Spain extends not only to the defence of these rights at the administrative

63

level, but also to legal actions that can be taken against conflicting third parties, as well as to the
legal safeguards that can be brought to bear against infringements of rights in the course of trade.
Finally, it is relevant to mention that the Commission is reviewing the protection of trademarks
in Europe, including the European Community and each of the National legislation and some
changes might occur during this year, although it is not expected that much will change in
relation to famous trademarks.

64

TAIWAN
Contributor:

Wu-Shung Houng
LOUIS INTERNATIONAL PATENT OFFICE
Taipei
Taiwan

I.

General Information

Except for the World Trade Organization (WTO), Taiwan has not yet become a signatory to
most of the international conventions that provide for transnational trademark protection,
including the Madrid Agreement Concerning the International Registration of Marks, the Paris
Convention for the Protection of Intellectual Property and the Convention Establishing the World
Intellectual Property Organization, due to some political and diplomatic reasons. However, in
order to harmonize with the global community and to meet with the Trade-related Aspects of
Intellectual Property Rights (TRIPs), Taiwan has legislated in her Trademark Laws to protect
well-known trademarks by adopting rules stipulated in Item (12), Paragraph 1 of Article 23 of
the Trademark Act and the Fair Trade Act. As for the Fair Trade Act, it is not to be detailed here
because this article merely defines the scope of the protection covered by the Trademark Act.
It is stipulated in Item (12), paragraph 1 of Article 23 of the Trademark Act that a trademark
application shall be rejected if the proposed trademark is identical or similar to another
persons well-known trademark or mark and hence is likely to confuse the relevant public or
likely to dilute the distinctiveness or reputation of said well-known trademark or mark. That is,
a well-known trademark can be protected under either of the two following cases: (i) where the
source identified by a well-known trademark is likely to be confused, and (ii) where the
distinctiveness and the reputation of the well-known trademark are likely to be diluted. The
implementing details of this article are specified in the Examination Guidelines for the Protection
of Well-known Trademarks under Item (12), Paragraph 1 of Article 23 of the Trademark Act
which was promulgated on November 9, 2007. In addition, the Examination Guidelines on
likelihood of Confusion, which was promulgated on May 1, 2004, can also be applied to
decide whether likelihood of confusion in this Article has been taken place or not.
Further, it is stipulated in Item (1) of Article 62 of the Trademark Act that knowingly using a
trademark identical or similar to a well-known trademark of another person, or using the
word(s) contained in said well-known trademark as a company name, a trade name, a domain
name or any other representation identifying the body or source of whose business, and hence
diluting the distinctiveness or reputation of said well-known trademark, shall be deemed
trademark infringement if consent of the well-known trademark holder is absent.
To apply the above-mentioned regulations, the following rules shall also be adopted. First, to
decide whether a trademark is well-known or not, shall be based on the fact at the time of filing

65

(Paragraph 2, Article 23 of the Trademark Act). Second, any invalidation against a trademark of
which the registration violates a well-known trademark shall be requested or inquired within five
years from the publishing date thereof. Nevertheless, the prescribed five-year period shall not
apply to a trademark which is registered in bad faith.
Registration of a trademark with the Office in Taiwan is not a pre-condition for determining if
the trademark is well-known. As a member of the WTO, Taiwan also has to comply with Article
6bis of the Paris Convention to protect unregistered well-known trademarks.
It must also be reminded that there is currently no special system for a trademark holder to file a
request for recognizing his/her trademark as a well-known trademark in Taiwan. In other words,
every one of the well-known trademarks in Taiwan is individually determined by the Examiner
or the Judge in each invalidation case of civil case.

II.

Recent Cases

In 2008, the Intellectual Property Office collected all cases regarding well-known trademarks
from 2003 to mid-2008 in Taiwan, including the cases decided by the Intellectual Property
Office, the Courts, and the Fair Trade Commission and Taiwan Network Information Center.
These cases are complied into a case directory, which was updated on June 30, 2009 to include
the cases decided from July, 1 2004 to June 30, 2009. Some of the most important issues with
regard to well-known trademarks are detailed as follows:
(i)

Determination of Well-known Trademark

Whether a trademark is well-known or not should be determined by recognition of domestic

consumers. However, a trademark, which has never been used domestically, can still be deemed
well-known if objective evidence shows that the reputation of the trademark established through
extensive use in other countries has also reached Taiwan. (Bread Superman case decided by
the Taipei High Administrative Court as Case No. 93-Su-4268 dated December 30, 2005.) In
considering the reputation of the trademark in Taiwan, any information proving that the goods of
the trademark have been extensively covered by newspapers or magazines sold in Taiwan, or
that the trademark has been widely and frequently discussed on the Internet in Chinese, can be
regarded as objective evidence.
Generally, the Examiner or the Judge determines whether a trademark is well-known or not
based on the following factors:
(1)
(2)
(3)
(4)

the strength of the distinctiveness of the trademark;

the extent to which the relevant enterprises or consumers know or recognize the trademark;
the duration, scope, and geographical area of use of the trademark;
the duration, scope and geographical area of promotion of the trademark;

66

(5)
(6)
(7)
(8)

whether the trademark has applied for registration or has been registered, and the term,
scope and geographic area thereof;
any record of successful enforcement of the trademark, especially that the trademark has
been recognized as a well-known trademark by an administrative or judicial authority;
the value of the trademark; and
other factors that could be considered in determining whether a trademark is well-known or
not.

(Intel Case decided by the Intellectual Property Court as Case No. 97-Minsangsangen1-1 dated
November 13, 2008.)
Further, when taking the above factors into consideration, the following information can be used
as supporting evidence: invoices, distribution documents, detailed statistics concerning the sales,
market shares, domestic and foreign advertising information from mass media, the ranking of
sales, the ranking of advertising volume, a brief description of the company or the companys
history showing the time that the trademark was created and the continual use of the trademark, a
certificate of registration or a list of worldwide registrations, a relevant certificate or a market
survey report provided by a credible organization, and documents of an opposition decision, and
invalidation decision or a Court decision.
Based on the above, it is recommended that the evidence for demonstrating the use of a
trademark should include an expression of the trademark and the date of the evidence, or
otherwise be supplemented by any information that may be used to identify the trademark in use
and the date/period of use.
(ii)

Determination of Likelihood of Public Confusion

In applying the forepart of Item (12), Paragraph 1, Article 23 of the Trademark Act, the
Examination Guidelines on likelihood of confusion can be used for determining whether there
exists a likelihood of confusion. According to the Examination Guidelines, the following factors
shall all be considered: the strength of the distinctiveness of the trademark; whether the relevant
goods or services are similar; the degree of similarity between trademarks; whether the prior
holder has diversified operation in various fields and the extent to which relevant consumers are
familiar with the respective trademarks. If two trademarks have been coexisting in the market for
a considerable period of time that relevant consumers of the goods or services have come to
know both of the trademarks and are able to distinguish them from each other, there is no
likelihood of confusion.
(Sanyang case decided by the Intellectual Property Court as Case No. 97-Sinsangen1-1 dated
August 6, 2009.)

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(iii) Determination of Dilution

In Taiwan, the Trademark Act stipulates two types of trademark dilution, i.e., likelihood of
dilution of the distinctiveness of well-known trademarks and likelihood of dilution of the
reputation of well-known trademarks. In that mechanisms of anti-dilution protection may
extend into the market where a conflict of interest is not obvious, it gives rise to a risk of
monopoly of particular words, devices, or symbols. In order to reduce the risk of monopoly, the
Examiner or the Judge requests that the trademark requiring anti-dilution protection should have
a higher level of reputation.
(San-jing case decided by the Intellectual Property Court as Case No. 98pSinsansu-49 dated
July 16, 2009.)
To determine if there exists likelihood of dilution, the following factors shall be considered:
(1)
(2)
(3)
(4)

the extent to which the trademark is well-known;

the degree of similarity between trademarks
the extent to which the trademark is used on other goods or services; and
the degree of inherent or acquired distinctiveness of the well-known trademark.

(DaAiWuSen & Device case decided by the Intellectual Property Court as Case No. 98Sinsansu-132 dated October 29, 2009.)

68

THAILAND
Contribution:

Mr. Kowit Somwaiya

LAWPLUS LTD
Bangkok
Thailand

Under Section 8 (10) of the Trademark Act, the Trademark Office is not allowed to register a
mark which is identical with a famous and well-known mark, registered or not, pursuant to the
rules prescribed by the Minister or which is confusingly similar thereto that the public might be
confused as to the proprietor or origin of the goods.
It is also possible to seek cancellation of the registration of any trademark that is identical or
confusingly similar to a well-known trademark upon application by the owner of the famous
mark. In order to be successful, the owner must establish that because of the similarities between
the two marks, the public might be confused as to the identity of the proprietor or of the origin of
the goods.
A recent example is Judgment No. 8834/2542, where the Supreme Court upheld the Trade Mark
Boards decision to cancel five registrations of the logos of A.C. Milan, Parma A.C., Juventus
F.C., Argentina Football Association and Ajax Amsterdam F.C. by a Thai national. The Supreme
Court held that the marks were confusingly similar to the well-known football team logos and
therefore would cause confusion to the public, if they were used to sell similar goods to those
sold by the clubs.
There is also criminal action against a person who uses the mark in bad faith with intention to
benefit from the good will of the famous mark. However, it remains unclear whether these
provisions will have the effect of adopting the anti-dilution laws of the EU and the US.
Thailand has also set up a Famous and Well-known Marks Committee, which reviews
applications for well-known marks to be registered. The committee will accept a mark that is
well-known if the goods or services used with the mark have been continuously and extensively
sold, used or advertised in Thailand or abroad to the extent that it is well-known and recognised
by the general public in Thailand. As of April 2010, the committee has received applications to
deposit 183 marks as well-known marks, approving 75 of them. Among them include Red Bull,
Gucci, Seiko and Lacoste. This appears to be somewhat similar to defensive trade mark
provisions as a trade mark that is given well-known status under the ministerial notification
will be given cross-class protection.
Consequently, Thailand, by adopting the Paris Convention and TRIPS Agreement, has provided
protection of famous marks. It has also developed a rather unique committee which solely
determines whether a mark is well-known. On the other hand, it appears that there are no
provisions which will extend to protection against dilution of an owners reputation.

69

UNITED KINGDOM
Contribution:

Mr. Stephen Geary

Bawden & Associates
Shropshire
United Kingdom

Well-known Marks
Section 56 of the Trade Marks Act 1994 expressly makes Article 6bis of the Paris Convention
and Article 16 of TRIPS protecting well-known marks part of UK domestic legislation.
To qualify for protection, a trade mark must be well-known in the UK. The owner must be a
national of, domiciled in or have a real and effective commercial establishment in a Convention
country.
The concept of well-known means a substantial degree of recognition amongst the public in a
substantial part of the UK. It is clear that some very high percentage of recognition would be
required but unlikely that a UK court would be so prescriptive as to follow the German Courts
requirement of 80% recognition.
In Cipriani SRL and ors v Cipriani (Grosvenor Street) Limited [2008] EWHC 3032 the English
High Court set out a flexible, non exhaustive, basic framework for assessment of whether the
mark CIPRIANI was well-known. The court applied the six criteria contained in Article 2 of the
1999 Joint Recommendation concerning the Protection of Well-Known Marks of the Assembly of
the Paris Union for the Protection of Intellectual Property and the General Assembly of the
World Intellectual Property Organisation which are, in summary:

the degree of knowledge or recognition of the mark in the relevant sector of the public;

the duration, extent and geographical area of any use of the mark;

the duration, extent and geographic area of any promotion of the mark;

the duration and geographical area of any registrations or applications for registration of
the mark to the extent they reflect use or recognition of the mark;

the record of successful enforcement of the mark and in particular whether courts in other
jurisdictions recognised that the mark was well-known; and

the value associated with the mark.

There is no requirement for the owner of the well-known mark to carry on any business or have
any goodwill in the UK.

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Section 56 of the Trade Marks Act 1994 confers upon the owner of the well-known mark the
right to an injunction to restrain use of an identical or similar mark in the UK which is used for
identical or similar goods or services where there is a likelihood of confusion. These rights are
lost if the owner acquiesces for five years or more or the third party commenced use prior to the
31st October 1994. Well-known marks may form the basis of opposition or invalidation
proceedings.
Where a claimant has registered rights there may still be advantage in relying on Section 56
Trade Marks Act 1994. For example, it is a defence in UK registered trade mark infringement
proceedings that the defendant is honestly using his own name. No such defence applies to a
claim based on a right to a well-known mark.
Preparation of evidence that a mark is well-known is costly and time-consuming. As financial
remedies are not available in the UK for the unauthorised use of a well-known mark, an owner
should consider whether it has any grounds in passing-off in the absence of registered rights to
provide a basis for financial remedy.
However, there are limitations to passing-off actions which make it attractive for claimants with
businesses outside the UK to rely on rights to well-known marks. A claimant in a passing-off
action has to establish that it has business goodwill in the UK as distinct from reputation. In
Anheuser-Busch Inc v Budejovicky [1984] FSR 413 the absence of any trade in beer marked
BUDWEISER in the UK meant there was no protectable goodwill even though the trade mark
BUDWEISER had reputation in that it was well-known to the public as a famous American
beer. However, in Cipriani SRL and ors v Cipriani (Grosvenor Street) Limited [2010] EWCA
Civ 110 the English Court of Appeal held that the famous Venetian Hotel Cipriani could
establish protectable goodwill in its name in the UK through targeting and attracting a significant
number of UK customers even thought it had no business premises in the UK. The distinction
between the Cipriani and the Anheuser Busch cases is that the former applies to services and the
latter to goods.
The Trade Marks Act 1994 provides for a special kind of protection available to trade marks
which have a reputation. Use of an identical or similar mark which would, without due cause,
take unfair advantage of, or be detrimental to, the distinctive character or the repute of a
registered trade mark with a reputation is a trade mark infringement. There is no need to show
likelihood of confusion. Protection for marks with a reputation extends to goods and services
which are dissimilar to those specified in the trade mark registration. In Intel Corporation Inc v
CPM United Kingdom Limited Case C-252/07 (ECJ*), the court confirmed that there must be a
link between the marks the damage envisaged by Section 10(3) of the Act.
Opposition or invalidation proceedings may also be based on an earlier mark with a reputation.
*now called the Court of Justice of the European Union (CJEU)

Marks with Reputation

Section 10(3) of the Trade Marks Act 1994 provides for a special kind of protection available to
trade marks which have a reputation. Such marks are sometimes called well-known marks.

71

Use of an identical or similar mark which would, without due cause, take unfair advantage of, or
be detrimental to, the distinctive character or the repute of the registered trade mark with a
reputation is a trade mark infringement.
Reputation means known by a significant part of the public concerned for the products or
services covered by the registration. Reputation must be in the place where the trade mark
registration pertains. This is relatively straightforward for a UK national registered trade mark.
However, in Pago International v Tyrolmilch registrierte Genossenschaft Case C-301/07, the
European Court of Justice (ECJ)*, considered what this meant for a Community Trade Mark
(CTM) registration. A CTM registration is a unitary right enforceable by the national courts of
each member state of the European Union (EU). The ECJ held that reputation in one member
state of EU, namely Austria, was sufficient to establish reputation throughout the entire EU even
though Austria accounts for only 1.7% of the EU population.

It is not necessary to establish likelihood of confusion. The protection extends to goods or

services which are dissimilar to those specified in the trade mark registration.
However, there has to be a link between the registered trade mark and the defendants mark. In
Intel Corporation Inc v CPM United Kingdom Limited Case C-252/07 the ECJ stated that a link
was established if there was a likelihood of confusion on the part of the average consumer, or if
the defendants mark called the mark with a reputation to the mind of the average consumer.
The court globally appreciates the factors relevant to this link. These include the degree of
similarity between the two marks, the degree of similarity between the sets of goods and services
sold by reference to the marks and the degree of reputation and distinctive character. There is
interdependence between the factors. The closer the marks are, the more likely there is to be a
link. However, the further apart the goods or services are, the less likely there is to be a link,
regardless of how similar the marks are. Similarly, the greater the distinctive character and
reputation of the mark, the more likely that there is to be a link. This too, may be offset by
dissimilarity between the respective goods or services.
In addition to the link, the mark with a reputation must also suffer or be likely to suffer at least
one of the following forms of damage:

Taking unfair advantage of the distinctive character or repute of the mark with a
reputation (free-loading) requires that some real economic advantage has been obtained by
the defendant, such as misappropriation of goodwill. It has to be unfair in the sense that the
defendant should have paid for it or made its own effort at marketing. There is no need to
show detriment.

Causing detriment to the distinctive character means damaging the capacity of the mark
with a reputation to enable consumers to denote the origin of goods or services (also
known as blurring or dilution). In Intel, the ECJ stated that causing detriment to the
distinctive character of the mark with a reputation requires evidence of a serious likelihood
of some change in the economic behaviour of consumers. According to the English courts,
this must be likely to cause real and tangible harm. The most likely way to satisfy this
requirement is to show that the average consumer is confused into believing that the owner
of the mark with a reputation is extending its range of goods or services to those of the
defendant.

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Causing detriment to the repute of the mark with a reputation means sullying or debasing it
by association with something unseemly. It is sometimes called tarnishing. In Intel, the
ECJ did not comment on whether causing detriment to the repute of the mark with a
reputation also requires evidence of a serious likelihood of some change in the economic
behaviour of consumers which causes some harm. It is logical to assume so.

Without due cause means that once the owner of the mark with a reputation has established
the other factors the defendant has the burden to show that the use complained of is with
due cause.

Opposition or invalidation proceedings may also be based on an earlier mark with a reputation.
The practical effect of the Intel decision is that proceedings based on causing detriment to the
repute or distinctive character of marks with reputation are becoming more expensive because of
the additional evidential burden of showing change in the economic behaviour of consumers.
There is a temptation to rely on survey evidence. Compiling survey evidence is expensive and
the English courts treat it with caution.

73

VIETNAM
Contribution:

Mr. Nguyen Anh Ngoc

INVESTIP
Hanoi
Vietnam

Vietnam has also ratified the Articles of the TRIPS Agreement and Paris Convention in relation
to Famous marks. Its legislative provisions replicate Article 6bis of the Paris convention holding
that where there is a likelihood of confusion as to the origin of the goods and/or services or an
inaccurate impression of the connection between the owner of the well-known trade marks and
others, the mark should not be registered, even if it is in respect of dissimilar and irrelevant
goods and/or services.
Article 6.3(a) holds that the ownership of well-known-marks shall be established on the basis of
use independently from registration procedures. This means that famous marks will be protected
in Vietnam, regardless of their registered status.
Article 4.20 defines a well-known mark as a mark that is widely known throughout the territory
of Vietnam. Article 75 then goes on to define the criteria to be taken into account when
considering the well-known status of a mark as:
1.

The number of the related consumers who are aware of the mark through purchase or use of
the goods or services bearing the mark or through advertising;

2.

the territorial scope of circulation of the goods/services bearing the mark;

3.

the turn-over of the sale or supply of the goods or services bearing the mark or the volume of
the goods sold or the services supplied;

4.

the period of continuous use of the mark;

5.

widespread goodwill of the goods/services bearing the mark;

6.

the number of the countries granting protection to the mark;

7.

the number of the countries recognizing the mark as well-known; and

8.

the value of assignment, licensing price, or the value of investment capital contribution in
respect of the mark.

Consequently, in addition to providing protection for famous marks in accordance with the Paris
Convention and TRIPS Agreement, Vietnam has gone further by attempting to compose a nonexhaustive list of factors that will be relevant when seeking to establish that a mark is wellknown in Vietnam.